Tuesday, March 31, 2009

TTABlog Quarterly Index: January - March 2009

Here is the 18th TTABlog Quarterly Index. That's right, the blog is nearly four and one-half years old. The first post was on November 8, 2004, and concerned (who else?) Leo Stoller (here). This post in number 1,252.


Section 2(a) - scandalous:

Section 2(d) - likelihood of confusion:

Section 2(e)(1) - mere descriptiveness:

Section 2(e)(4) - Primarily Merely a Surname:

Section 2(e)(5) - Functionality:

Section 2(f) - Acquired Distinctiveness:


Failure to Function/Non-distinctiveness:

Fraud:

Genericness:

Ownership:

Priority:

Procedural Issues:

Santiago Convention:



Single Creative Work:

Specimen of Use:

Other:

Text and photos ©John L. Welch 2009.

posted by John L. Welch @ 3/31/2009   0 comments

Precedential No. 11: Section 2(d) Opposer Fails to Submit Registration Properly, Loses on Priority Issue

Once again, an Opposer who failed to properly introduce a registration into evidence reaped dire consequences. Syngenta Crop Protection, Inc. filed a Section 2(d) opposition to registration of the mark AgMeter for "pesticide detectors" and "evaluation and testing of produce for pesticides," alleging likelihood of confusion with the registered mark AGROMETER for related goods and services. Were the registration in evidence, it would have removed the issue of priority, but without it Opposer's evidence of prior use was inadequate. So the Board dismissed the opposition for failure to prove priority. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 UPSQ2d 1112 (TTAB 2009 [precedential].


The Board plowed through numerous evidentiary issues before burying Syngenta's notice of opposition. The key one concerned Sygenta's submission of a mere copy of the registration certificate for the AGROMETER mark (under which it was licensed). This was not “a copy ... of the registration prepared and issued by the Patent and Trademark Office showing both the current status of and current title to the registration.” Trademark Rule 2.122(d)(2) [emphasis by the Board]. Nor did Syngenta take advantage of the other ways to submit a certificate: a status-and-title copy submitted with the notice of opposition; via testimony; or via stipulation or admission. [Note that this proceeding was commenced prior to August 31, 2007; for inter partes cases commenced on or after August 31, 2007, a pleading may be accompanied by copies of USPTO electronic records showing the status and title of a pleaded registration.]

That mistake proved to be fatal. As stated, had Syngenta properly submitted the registration, priority would not have been an issue. Instead Syngenta had to beat Applicant's constructive first use date (i.e., its filing date) of June 29, 2005, but Syngenta's testimony merely implied that it was using the mark before June 4, 2007. End of Section 2(d) story.

The case was infected with various other evidentiary problems, involving Opposer Syngenta's three notices of reliance (one timely-filed) and its submission of numerous exhibits with its brief.

Syngenta's testimony period closed on January 13, 2008, but it filed notices of reliance on January 31 and March 17, 2008. However, Syngenta was actually submitting the transcripts of its testimony taken during the testimony period. The transcripts were not untimely; they were just improperly (and unnecessarily) submitted with notices of reliance. So the Board accepted the transcripts as part of the record.

At final hearing, Applicant Bio-Chek objected to the testimony transcripts because they were not signed by the witnesses, and because only one of the two was signed by the official who administered the oath. The Board, however, ruled that Bio-Chek had waived this objection by failing to raise it in a timely fashion. Such an objection should be made at the time the transcripts were submitted, which would have given Syngenta time to correct the error.

The exhibits attached to Syngenta's brief were untimely, and the Board refused to consider them. See TBMP Sec. 704.05(b).

As to Syngenta's timely notice of reliance, the Board refused to consider the copy of the AGROMETER registration (as discussed above). Various other documents (e.g., product descriptions, marketing materials, shipping records, internal correspondence, and Internet materials) were not proper subject matter for a notice of reliance. They require testimony for identification and authentication.

Several definitions from the Merriam-Webster online dictionary were accepted via judicial notice, even though the pages did not indicate that this online dictionary is the electronic version of the printed dictionary. The Board reasoned that "the definitions appear to be of a type that are 'not subject to reasonable dispute in that [they are] capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.' Fed. R. Evid. 201(b)(1)."

Copies of Office Actions from two trademark files and a copy of a U.S. patent application were admissible as official records of the USPTO.

And so, Syngenta's evidence consisted of the two testimony transcripts, the dictionary definitions, and copies of two office actions and one published patent application.

TTABlog comment: One might say that Syngenta pulled a "Mister Fluffy."

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/31/2009   0 comments

Monday, March 30, 2009

Precedential No. 10: Irked TTAB Sanctions Counsel for Filing Untenable Motion to Dismiss

Okay, readers, here's the question: an opposition is filed against two applications belonging to your client. While the opposition is pending, the PTO inadvertently issues a registration on one of the applications. What do you do? Would you file a motion for partial dismissal of the opposition as to the application that inadvertently issued to registration? The attorney for Aqua Gen AS filed such a motion, and the Board was not pleased. Schering-Plough Animal Health Corporation v. Aqua Gen AS, 90 USPQ2d 1184 (TTAB 2009) [precedential].


The Board pointed out that the inadvertent issuance of the registration "cannot, under any reasonable view, provide applicant with a ground for seeking dismissal. In such situations, the proper action by a party is to inform the Board promptly, by phone or in writing, of the inadvertent issuance of the registration so that the Board may request the appropriate action by the Director without requesting dismissal of the case." [Emphasis in original].

So the Director of the USPTO cancelled the registration and returned the application to pending status. But the Board wasn't done with Applicant's counsel:

By filing an untenable motion to dismiss when the application was the subject of a pending opposition and therefore simply inadvertently matured into a registration, counsel for applicant unnecessarily delayed this proceeding, and increased the litigation costs to both parties. Further, the Board’s resources were wasted by having to rule on this unnecessary motion. Counsel for applicant is reminded of his obligations pursuant to Fed. R. Civ. P. 11, that when filing a motion, he is certifying that all claims and other legal contentions asserted therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law, and are not made for purposes of harassment or delay.

The filing of a motion to dismiss in this instance represents a misunderstanding of Board practice and procedure. Under the circumstances presented herein, and to more closely manage the prosecution and defense of this proceeding, counsel for applicant and his co-counsel must first secure permission from the appropriate interlocutory attorney by telephone before filing any unconsented or unstipulated motion in this matter.

Having taken counsel to the TTAB sanction woodshed (sometimes known as the "Stoller Building"), the Board resumed the proceeding and re-set discovery and trial dates.


TTABlog comment: Was counsel's transgression so egregious, or so common, that this ruling deserves "precedential" status?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/30/2009   0 comments

Friday, March 27, 2009

Precedential No. 9: TTAB Dismisses 2(d) Petition to Cancel "DESIGNED TO SELL" Registration

After the excitement of the last two posts (captured in the illustration immediately below), we come back down to earth today with a mundane, albeit precedential, ruling in a Section 2(d) cancellation proceeding. Petitioner Giersch claimed common law rights in the mark DESIGNED2SELL for "providing the services of staging managers and or renters who are placed in residences for the sole purpose of maintaining them through the sales cycle in order to improve the residence's selling potential," and for related interior decorating services and landscaping services. He petitioned to cancel Scripps' registration for the mark DESIGNED TO SELL for entertainment services, including television programs relating to interior design, decorating, and landscaping. Giersch lost. Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020 (TTAB 2009) [precedential].


Petitioner Giersch established priority vis-a-vis the staging services, but he failed to show that the interior decorating services or the landscaping services "ever constituted a regular or recurring activity such as to create common-law rights" for those services.

Respondent Scripps contended that Giersch abandoned any common-law rights by discontinuing use and by selling his business. However, because the purported abandonment period was less than three years, Scripps had the burden to prove that Giersch intended to abandon his mark, and its proofs fell short. Giersch testified that he intended and intends to resume use, and that his brother has run a parallel business using the mark, with Giersch's permission and control, since a date prior to the alleged abandonment period. As to the sale of his business, the sale did not include the trade name, which Giersch intended to maintain.


Turning then to the 2(d) issues, the Board found Giersch's mark to be "highly suggestive and weak" and the involved services to be "dissimilar and unrelated." Despite the "high similarity between the marks" and a possible overlap in customers, the Board found no likelihood of confusion, and it dismissed the petition for cancellation.

TTABlog comment: I fail to see why this decision was deemed precedential. Seems pretty straightforward to me.

Postscript: In an earlier interlocutory decision in this case, the Board exercised its discretion under Rule 36(b), Fed. R. Civ. P., to allow Scripps to "withdraw" its effective admissions (having failed to timely respond to requests for admission) and to serve responses to Giersch's admission requests.[TTABlogged here].

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/27/2009   0 comments

Thursday, March 26, 2009

Precedential No. 8: Divided TTAB Panel Affirms Refusal to Register Chippendales' "Cuffs & Collar Mark"

In a highly entertaining 41-page opinion [stripped here to its bare essentials], a divided TTAB panel affirmed the PTO's refusal to register the "Cuffs & Collar" design mark shown below, finding it not inherently distinctive for "adult entertainment services, namely exotic dancing for women in the nature of live performances." [Applicant Chippendales already owns an incontestable, Section 2(f) registration for the same mark; it was seeking to establish inherent distinctiveness this time around.] In re Chippendales USA, Inc., 90 USPQ2d 1535 (TTAB 2009) [precedential].


Observing that application of the packaging/product design dichotomy [the former may be inherently distinctive, the latter cannot be] is not feasible when considering a service mark, the Board stated that it "must simply assess whether it is reasonable to assume that the consumer is predisposed to view the trade dress as a source indicator." Accordingly, the Board held that the mark at issue here, "like the service mark in Two Pesos, is a form of trade dress which may be inherently distinctive." [Emphasis in original].

The question then was whether the "Cuffs & Collar" mark was inherently distinctive at the time Chippendales adopted the mark in 1979.

The Board applied the first three factors of the CCPA's four-part Seabrook test to determine the mark's inherently distinctiveness:

1. whether the Cuffs & Collar Mark is a common basic shape or design;

2. whether the Cuffs & Collar Mark is unique or unusual in the particular field;

3. whether the Cuffs & Collar Mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services.

The panel majority ruled that Examining Attorney Steven R. Berk had established a prima facie case of non-distinctiveness. The evidence included examples of various provocative costumes, leading the majority to conclude that "the Cuffs & Collar Mark was a common basic shape or design," one that comprised a "simple variation on revealing and provocative costumes or uniforms generally in use in the adult-entertainment, exotic dancing field."

Chippendales' expert, Dr. Rachel Shteir, stated that the Cuffs & Collar design was "inspired" by Playboy's bunny costume, which suggested to the panel majority that the Cuffs & Collar Mark was "not necessarily unique in the broader field of adult entertainment when applicant adopted it." Indeed, this same evidence led the majority to find that the mark was a refinement of an existing form of ornamentation.

The majority pooh-poohed Dr. Shteir's declaration because she, although highly qualified in the field of dramaturgy, was not familiar with the field of trademarks and did not conduct any empirical research, "difficult as that may be at this point in time," to determine how customers perceived the Cuffs & Collar Mark when first adopted. [Her comparison of the Chippendale dancers to Mary Poppins, both purportedly being iconic characters, did not impress the majority.]

The majority found nothing in the Dr. Shteir's testimony or in the other evidence "which in any way alters the simple fact that the focus of the service at its inception was the bodies of the performers, not the particulars of their minimal attire."

The majority therefore concluded that Chippendales had "failed to present sufficient evidence to establish that its mark was inherently distinctive at the time of adoption, and has not, therefore, successfully countered" the PTO's prima facie case. The majority noted, however, that Chippendales' ownership of an incontestable registration for the mark "should serve as no small consolation in spite of our decision here."

Judge David Bucher, in a lively dissent, asked "what purpose is served by prosecuting this application in light of applicant's [incontestable] registration," particularly in light of the burden it placed on the PTO? "Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts."

Nonetheless, he found that the subject mark "would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive."

Judge Bucher accepted Dr. Shteir's conclusion that "the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein." She posed the critical question as follows:

Would a woman attending her first Chippendales performance in the late 1970’s have understood from that show alone that the “Cuffs and collar” were a designation of Chippendales or would she have seen it as just some generic dress for male strippers? [Or would she not have paid that much attention to it? -ed.]

Judge Bucher then cogently presented in bullet-point format his many disagreements with the PTO's position and/or the salient points made by the majority. Rather that regurgitate them here (they are recommended reading), suffice it to say that he found, especially in light of Dr. Steir's testimony, that the PTO did not meet its burden to show that the Cuffs & Collar Mark is a mere refinement of an existing form of ornamentation.

TTABlog comments: For what it's worth, imaging myself as a woman attending a Chippendales show in 1979, I don't think I would have considered the Cuffs & Collar outfit to be a source indicator. I would have seen it, if I paid attention to it at all, as simply a clever costume (or non-costume). But the question here is, did Chippendales prove its case? The majority said no. Judge Bucher said yes.

What is the significance, if any, of the fact that all three panel members (Walsh, Wellington, and Bucher) are male?

Readers may recall that Ron Coleman, at his Likelihood of Confusion blog (here), thought Chippendales would win this one. In the commentary to Ron's post, Chippendales' attorney, Steve Feingold, explained why his client was seeking another registration, even though it already owned an incontestable, 2(f)-based registration for the same mark:

"[S]everal times over the last few years when we have written to an infringer providing goods or services not within the ambit of the recitation, the response has been that the 2(f) notation means that we have no rights outside of that area without proving secondary meaning in a new market place. I strongly disagree with that argument if the infringement is happening in an area of related commerce but when you are dealing with a non-trademark lawyer who is responding because he is friends with the infringer (as often happens when you are going after small companies that just 'can't believe that in America you can stop me from doing that') being right is just not enough to avoid undue expense."

Ron Coleman comments here, embracing Judge Bucher's position and pointing out that he (Ron) thought Chippendales "should" win, not "would win.

TTABlog postscript: Chippendales appealed to the CAFC on May 29, 2009.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/26/2009   0 comments

Wednesday, March 25, 2009

Wal-Mart Bests Loufrani in TTAB Battle over "Smiling Face" Mark

A long-running TTABattle over the ubiquitous "smiling face" mark ended in victory for Wal-Mart over Franklin Loufrani. 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. Wal-Mart Stores, Inc. v. Franklin Loufrani, Oppositions Nos. 91150278, 91154632, and 91152145 (March 20, 2009) [not precedential]


Loufrani sought to register his SMILEY & design mark under Section 1(b) for "hundreds of goods and services" in 23 different classes, ranging from cosmetics for animals, to mosquito nets, to transportation by ferry, boat, rail, land, and air. Loufrani disclaimed the "right to use the representation of a smiling face apart from the mark as shown."

Wal-Mart first opposed one application in 2001 and the other in 2003, alleging alternative grounds: (1) that the Loufrani mark is a ubiquitous icon that is incapable of functioning as a mark; and (2) if it is capable of functioning as a trademark, then Wal-Mart has priority and acquired distinctiveness, and the Loufrani mark is likely to cause confusion with Wal-Mart's mark.

In 2002, Wal-Mart filed an application to register its mark (in the color yellow) for "retail department store services." Loufrani opposed, alleging that the mark "does not serve any trademark function." The three oppositions were subsequently consolidated.

Priority: The Board first addressed the issue of priority, pointing out that Wal-Mart must show that its common law mark is distinctive, either inherently or via acquired distinctiveness. The Board agreed with the parties that the "smiling face" design is a "ubiquitous, non-inherently distinctive design." The question then was whether Wal-Mart acquired distinctiveness prior to Loufrani's priority date (his filing date) of June 3, 1997. Said the Board: "Considering that we have already determined that the smiling face is a common feature of modern American culture, this will not be something easily achieved."

Nonetheless, Wal-Mart proved that it began use of the mark in January 1996 and spent a "truly impressive" amount of money on advertising, including prime time network and cable television, "even in the short period before applicant's priority date."


The Board noted that "there is little evidence of any substantial use by other retail department stores of a similar smiling face design." It concluded that "because of the very extensive use and advertisement of the smiling face design for Wal-Mart’s retail department store services, opposer’s mark acquired secondary meaning for retail department store services prior to applicant’s priority date."

Distinctiveness of Loufrani Marks: The question of distinctiveness required a consideration of Loufrani's mark as a whole. The Board observed that "[n]ormally, we would be hesitant to conclude that the word 'Smiley' is not inherently distinctive in an intent-to-use application." But the evidence showed that the word "smiley" is the "commonly used name of the symbol."

Therefore, when consumers encounter applicant's mark, they will view the entire mark as ornamental inasmuch as it consists of a ubiquitous, non-distinctive symbol and the commonly used name of the symbol. This conclusion appears inescapable.

The Board therefore sustained Wal-Mart's oppositions on the ground of non-distinctiveness.

Likelihood of Confusion: Loufrani's goods and services include many items that would be available in Wal-Mart's retail department stores. The "small differences" in the parties' marks are "unlikely to be noteworthy."

Loufrani argued that the likelihood of confusion issue is "moot because the claimed design cannot function as a mark." However, just because Loufrani disclaimed the design in his applications does not mean that the design is removed from consideration in the Section 2(d) analysis. Moreover, the word "smiley" describes the design, and it is unlikely that a consumer would rely on this word to distinguish the marks.

The Board therefore held that confusion is likely as to the goods and services in many of the classes in Loufrani's applications (17 out of the 23 classes). [Of course, the non-distinctiveness finding applied to all of the classes].

We add that this unusual case presents a rather close case involving a symbol that the parties agree is "ubiquitous." In our analysis, we have also considered the last two du Pont factors (177 USPQ at 567) that concern "the extent of potential confusion, i.e. whether de minimis or substantial" and "any other established fact probative of the effect of use." In effect, applicant is seeking to register his marks for a large number of goods that either are sold in opposer's stores or are the types of goods that would be sold in department stores. This fact increases the likelihood of confusion to the extent that applicant's mark, if used by a competitor, could result in a department store that used a confusingly similar mark throughout its store on hundreds of items as its house brand. We have little doubt that under such circumstances, confusion would be likely.


TTABlog note: See the July 2006 post at the Trademark Blog (here), which links to a New York Times article regarding this dispute. Oh yes! And have a nice day!

Postscript: Ryan Gile comments on the decision here at his Las Vegas Trademark Attorney blog

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/25/2009   0 comments

Tuesday, March 24, 2009

TTAB Reverses 2(d) Refusal: PTO Failed to Show "HEART" and "KOKORO" Confusingly Similar for Restaurant Services

The PTO unsuccessfully invoked the doctrine of foreign equivalents in claiming that Applicant's mark HEART for "cocktail lounges; restaurant and bar services" is likely to cause confusion with the registered mark KOKORO, in standard character and design form (below), for restaurant services. Although the cited registration stated that "[t]he English translation of 'KOKORO' is 'heart,'" the Board found the PTO's evidence of that English meaning to be insufficient to support the refusal. In re OpBiz, LLC, Serial No. 77055011 (March 20, 2009) [not precedential].


The Examining Attorney attached four items of evidence to her appeal brief, and Applicant objected on the ground of untimeliness. See Rule 2.142(d) and TBMP Section 1207.01. The Examining Attorney then asked the Board to take judicial notice of the evidence. However, three third-party registrations were inadmissible because the Board does not take judicial notice of prior registrations. Listings from on-line Japanese-American dictionaries were inadmissible because they were not available in printed format, nor did they have regular, fixed editions. Wikipedia evidence inherently lacked the trustworthiness to merit judicial notice; in any case, Applicant did not have an opportunity to rebut the evidence. Finally, however, an excerpt from the Columbia Encyclopedia regarding Japan's business dealings in the USA was admissible.

The PTO maintained that Japanese is a common and modern language and that American buyers familiar with Japanese will translate "kokoro" to the English term "heart." Applicant argued that "kokoro" has multiple English meanings besides "heart," including "mind," "spirit," "mentality," "thought," "will" and "intention." Applicant further argued that HEART and KOKORO differ in sound, appearance, and overall commercial impression.

The Board observed that, under the doctrine of foreign equivalents, terms from common, modern languages are translated into English in the Section 2(d) likelihood of confusion analysis. However, similarity in meaning is only one factor in the overall evaluation.

The Board found (without any evidence from the parties) that Japanese is a common and modern language that will be spoken and understood by an appreciable number of Americans. Moreover, the ordinary American purchaser who is knowledgeable in both English and Japanese will stop and translate the term.


The question, then, concerned the proper translation of KOKORO into English. The dictionary evidence showed that, as Applicant asserted, "kokoro" has other meanings besides "heart." Furthermore, a scholarly article pointed out that "[f]or language pairs that do not share the same cultural traditions, the notion of one-to-one equivalents is likely to become less and less reliable." [Emphasis by the Board].

"In the case of English and Japanese, the cultural conventions that govern communication differ to such an extent that English learners would be led into error if they only sought semantic equivalents because Japanese do not use the same expressions as we do to communicate the same messages in similar situations."

In sum, the Board concluded that "kokoro" has multiple English translations, and that HEART and KOKORO are not foreign equivalents. Because the marks also differ in sound, appearance, and commercial impression, the Board was convinced that confusion is not likely. And so it reversed the refusal.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/24/2009   0 comments

Monday, March 23, 2009

Hip TTAB Finds "STRIP HOP" Merely Descriptive of Adult Entertainment Services

For our latest addition to the WYHA collection of cases, consider the mark STRIP HOP for "adult entertainment services, namely, live performances by exotic dancers, night clubs and cabarets featuring alcoholic drinks and food." Can you dig it? The Board couldn't. It affirmed a Section 2(e)(1) refusal to register, finding the mark merely descriptive of Applicant John Rotolo's intended services. In re Rotolo, Serial No. 77008616 (February 17, 2009) [not precedential].

Lil Jon

Examining Attorney Giancarlo Castro maintained that the term "strip hop" is "commonly used to refer to a genre or type of music and dance style; and that applicant’s identified adult entertainment services encompass 'strip hop' music and dance." Applicant Rotolo limply contended that the mark is "a play on words in the classic sense of a coined or suggestive trademark."

The Examining Attorney submitted various Lexis and Internet excerpts showing that "strip hop" is "used descriptively to refer to a type of music and style of dance." For example, a Newsweek article called Atlanta the "center of the strip hop universe;" the Chicago Tribune, in an article entitled "'Booty shake' beginnings," stated that "[t]he beginnings of strip-hop can be traced back nearly two decades to 2 LiveCrew;" and the Arizona Daily Star referred to Lil' Kim as "[n]o mere strip-hop diva," but a singer-songwriter who "spins tough, lyric-driven tales of modern-day womanhood."

Based on this evidence, the Board had "no doubt that prospective customers for applicant’s services would understand STRIP HOP to describe the music and dance to be featured at applicant’s night clubs and cabarets." Although only one of the proffered excerpts used the term "strip hop" in connection with adult entertainment services, the Board found that:

The descriptive significance of the term “strip hop” as used in these excerpts is equally applicable to adult entertainment services. This is especially the case since several of the excerpts reference the risqué nature of "strip hop," e.g., "X-rated lyrics," sexual moves," "stripper moves," "hot booty shaking," and "Booty-licious dance."

And so, the Board affirmed the refusal to register.

TTAB query: So, fellow music lovers, would you have appealed?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/23/2009   0 comments

Friday, March 20, 2009

Finding Circular Shape for Beach Towel to be Functional, Chicago Federal Court Rules Registered Trademark Invalid

The United Stated District Court for the Northern District of Illinois held invalid the product configuration mark shown immediately below, for beach towels, finding the circular shape to be functional. [The mark is the subject of a 20-year old trademark registration (Reg. No. 1,502,261)]. Franek v. Walmart Stores, Inc., Civil Action No. 08-CV-0058 (N.D. Ill. March 13, 2009).


Judge Robert M. Dow, Jr. applied the "multi-factored test used by many courts in determining whether a produce feature is functional."

"(i) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item's design element; (ii) the utilitarian properties of the item's unpatented design elements; (iii) advertising of the item that touts the utilitarian advantages of the item's design elements; (iv) the dearth of, or difficulty in creating, alternative designs for the item's purpose; and (v) the effect of the design feature on an item’s quality or cost."

The court found that the existence of a third-party utility patent that claimed a circular beach towel constituted "strong evidence" of functionality, and therefore that Plaintiff Clemens E. Franek "must carry the heavy burden" to show the the circular shape of the beach towel is not functional.

Franek's advertisements touting a utilitarian advantage of the round towel -- it permits sunbathers "to reposition their bodies in order to get direct tanning exposure from the sun without having to move the towel" -- supported a finding of functionality.

Franek argued that, if the towel is large enough, a sunbather would not have to reposition the towel no matter what the shape. However, expert testimony indicated that a circular towel is the most efficient shape to serve the purpose since it "uses the least amount of area to achieve the function."

Therefore, the court concluded that Franek's circular configuration for a beach towel is functional and its mark is invalid.

Franek's renewal specimen of use

TTABlog comment: Note that, although the registration had been made incontestable, that did not immunize the mark from a functionality attack. See Sections 14(3) and 15 of the Trademark Act.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/20/2009   0 comments

Thursday, March 19, 2009

Giving Naked Consents Some Weight, TTAB Reverses 2(d) Refusal of "BUHLER & Design"

Can you name two places where naked consents are consequential? Nudist colonies and the TTAB. Applicant Buhler Technologies GmbH trumped a PTO Section 2(d) refusal by submitting naked consents from the owners of the two registrations cited by the Examining Attorney. Although Applicant conceded that the involved marks are essentially identical, the Board bought Applicant's argument that the goods of the parties are not related, and it gave "some weight" to the letters of consent in dubiously finding no likelihood of confusion. In re Buhler Technologies GmbH, Serial No. 79034792 (February 12, 2009) [not precedential].


Applicant sought to register the mark first shown above (upper left) for various industrial goods and services in classes 7, 11, and 35. The PTO refused registration in light of four existing registrations owned by two companies, two of the registrations being for the word BUHLER in standard character form, and two for the word-and design marks show above right and bottom, all for various industrial goods and services. [The listings of the goods and services occupy about seven pages of the 21-page decision].

The two owners of the registrations provided letters of consent stating little more than that they "hereby consent to the registration and use of the trademark 'Buhler'" Applicant argued that these naked consents were entitled to "some weight" and, when coupled with the differences in goods and services, compelled a finding of no likelihood of confusion.

The Board noted that the consent letters lacked information regarding the "underlying facts which led the parties to conclude that confusion is not likely," and contained no restrictions on use of the marks in order to avoid confusion. Moreover, the subject application is based "solely on treaty rights and not on use in commerce," and so "there is neither evidence of use nor any real basis for the affected parties to determine that, based upon prior experience, confusion is unlikely to occur."

Nonetheless, the Board concluded that the letters of consent "are entitled to some probative value": "Specifically, we may infer from the fact that consent was given by both registrants that owners of the cited registrations do not believe confusion is likely."

As noted above, Applicant conceded that its mark is "essentially identical" to the cited marks. The Board not surprising found that the marks, when viewed in their entireties, are "highly similar" in appearance, sound, and connotation, and convey "highly similar" commercial impressions.

As to the strength of the marks, the Board vaguely found that in light of the existence of the cited registrations, the two registrants "have contributed to the weakening of their marks such that they are entitled only to a somewhat narrowed scope of protection that is less than that to which a stronger mark may be entitled."

Applicant's Off-Line Filter

Finally, turning to the goods, the Board noted the Examining Attorney's position that the various goods involved are "broadly identified." However, according to the Board:

applicant’s goods are all used in the fields of filtering, analyzing, distributing and monitoring fluids and gases. Registrants’ good are used in the fields of food and waste processing, air cleaning and conditioning, manufacturing, motors, engines and electrical devices used with such motors. As identified, both applicant’s and registrants’ goods are used for specific purposes that are not clearly related or encompassed by one another.

[TTABlog note: Although Applicant's identification of goods includes some restrictions as to field of use, many of the goods in the cited registrations have no use restrictions. For example, Applicant's "air filters for air conditioning units for use in connection with fluid-technical systems as well as systems for analysis of gases and liquids" would seem to be either encompassed by or related to one Registrant's "filters and air cleaners for industrial use" and "filtering systems and equipment, namely, bag filters, dust collectors, and dust separators" and to the other Registrant's "air conditioning fans; parts of air conditioning installations, namely fans."]

Scoffing at the "mere conclusory statement" of the Examining Attorney regarding the relatedness of the goods, the Board saw the PTO's likelihood of confusion claim as "amounting to only a speculative, theoretical possibility."

Based "primarily" on the dissimilarity between the goods and services, and giving "some weight" to the letter of consent, the Board found that the PTO had not met its burden to demonstrate a likelihood of confusion. And so it reversed the refusal to register.

TTABlog comment: Is there any doubt that the Board could have found the goods (at least) related if it wanted to? Why give these naked consents any weight? I am baffled about that.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/19/2009   0 comments

Wednesday, March 18, 2009

Precedential No. 7: TTAB Okays Amended Section 18 Petition for Partial Cancellation, if Amended a Bit More

Petitioner IdeasOne sought to register its mark WELLCORPS INTERNATIONAL for dietary supplements, but was blocked by Respondent's registration of WELLCORP in standard and design form, for "consulting services in the field of healthcare." IdeasOne filed a petition for partial cancellation under Section 18, but was met with a motion to dismiss under FRCP 12(b)(6) for failure to state a claim. It amended its petition to assert a revised claim under Section 18, but again was met with a motion dismiss. This time, however, Petitioner almost got it right, and the Board allowed it another 20 days to file a second amended petition. IdeasOne, Inc. v. Nationwide Better Health, Inc., 89 USPQ2d 1952 (TTAB 2009) [precedential].


In its first amended petition, IdeasOne alleged that Respondent has never used the WELLSCORPS INTERNATIONAL mark for "dietary supplements sold to the general public." So it sought to limit the recitation in the challenged registration as follows: "consulting services in the field of health offered to employers, not including the provisions [sic] of dietary supplements." Petitioner alleged that this amendment would "obviate" any likelihood of confusion with its marks. Respondent again moved to dismiss for failure to state a claim under FRCP 12(b)(6).


The Board reviewed the requirements for Section 18 partial cancellation, as set out in Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994): the petitioner must plead that the proposed restriction would avoid a likelihood of confusion and that respondent is not using its mark for the services being excluded. And the pleading must give adequate and fair notice to the other party as to the restriction being sought.

The Board found that IdeasOne had satisfied the Euro-Star requirements, except for one small problem: the language used by Petitioner for the proposed restricted recitation of services did not "comport with trademark examination practice and procedure."

Petitioner, by its proposed restriction, effectively seeks to exclude goods (dietary supplements) that are not encompassed within the scope of a registration that only includes services.

The Board helpfully provided exemplary language that would be acceptable: "consulting services in the field of health offered to employers excluding consulting services in the field of dietary supplements."

Respondent asserted that the proposed amendment was frivolous and harassing, but the Board was unmoved: "petitioner's proposed restriction to respondent's proposed registration does have a bearing on the issue of likelihood of confusion with petitioner's pleaded applications, and therefore cannot be viewed as a frivolous or harassing legal maneuver." In fact, the Board has encouraged parties to seek a restriction under Section 18 in appropriate cases:

Section 18 provides an avenue of relief for a party, for example, who faces a cited registration with the no longer permitted identification of goods “computer programs,” and believes that a restriction may serve to avoid a likelihood of confusion. Thus, in bringing the instant petition for partial cancellation, petitioner was acting in a manner entirely consistent with accepted Board practice.

Observing that it freely grants leave to amend pleadings challenged for insufficiency, the Board gave IdeasOne 20 days within which to file a second amended pleading that states a proper Section 18 claim.


TTABlog comment: As the Board noted in footnote 5, the fate of Petitioner's claim on the merits remains for trial.

Seems like a coexistence agreement would be a wise resolution of this dispute.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/18/2009   0 comments

Tuesday, March 17, 2009

TTAB Finds "KID'S OUTDOORS" & Design Not Confusingly Similar to "OUTDOOR KIDS," Both for Clothing

Petitioner Outdoor Kids, Inc. was tossed off the TTAB teeter-totter when it sought to cancel two registrations for the mark KID'S OUTDOORS & Design (shown below) for clothing and toys [KID'S OUTDOORS disclaimed]. Petitioner relied on its registration for the mark OUTDOOR KIDS for outdoor clothing and sporting goods for children [KIDS disclaimed] in alleging likelihood of confusion and dilution. Despite the facts that the goods are legally identical, are deemed to travel in the same trade channels, and are purchased by ordinary consumers exercising ordinary care, the Board found the differences between the marks and the weakness of Petitioner's mark to be sufficient to distinguish the two marks. Outdoor Kids, Inc. v. Parris Manufacturing Co., Inc., Cancellation Nos. 92045687 and 92046943 (March 9, 2009) [not precedential].


Petitioner boldly asserted that its mark is famous, but its proofs came laughably short of proving it. Petitioner did not provide sales or advertising figures, and in fact used its mark only on swimsuits and water bottles (even though its registrations listed various other items in classes 25 and the class 28 goods did not include water bottles). [TTABlog comment: FRAUD!! But Respondent never made the claim].

Given the great deference that is accorded a famous mark under Section 2(d), one who claims fame must "clearly prove it." But there was no way in heck that Petitioner proved its mark famous. Indeed, the Board found the mark OUTDOOR KIDS to be weak, noting that the pleaded registration issued under Section 2(f) with a disclaimer of KIDS. "By doing so, Petitioner has admitted that OUTDOOR KIDS is not inherently distinctive, and that these words are merely descriptive of its goods, with the word KIDS being generic."

The Board must accept that Petitioner's registration has acquired distinctiveness (since Respondent did not seek to cancel), but "there are degrees of acquired distinctiveness." In this case, the degree must be considered as "minimal."

The only Class 25 goods on which petitioner has used its mark are swimsuits, and there is no evidence as to sales figures or advertising for these goods. And petitioner has not used its mark for any of the goods in Class 28. Thus, there is nothing in the record that would enable us to conclude that, by virtue of petitioner’s use and advertising of its mark for its own clothing and toy products, petitioner’s mark has become a strong mark. Accordingly, in the likelihood of confusion analysis we must treat petitioner’s mark as a weak mark that is not entitled to a broad scope of protection.

Comparing the two marks, Respondent argued that the elk design is the dominant portion of its mark, but the Board disagreed: the words KID'S OUTDOORS remains a "noticeable part of the mark." However, even Petitioner acknowledged that the elk design is distinctive, and "when the word portion of marks are highly suggestive or descriptive, the presence of a design may be a more significant factor."

Observing that Petitioner's mark OUTDOOR KIDS "has acquired distinctiveness only for that particular word order," and that the words "kids" and "outdoors" in each mark are "highly descriptive and/or generic" [TTABlog query: and/or?], the Board asserted that "consumers are not likely to assume that all marks that contain these elements or permutations of these elements indicate a common source."

Finally, the words in the marks have different connotations and commercial impressions: For OUTDOOR KIDS, "the connotation is that of children who enjoy outdoor activities or nature." [TTABlog query: Wouldn't "and/or" be appropriate here?] For KID'S OUTDOORS "the connotation is that of an outdoor environment that is friendly to children, or [and/or? - ed] that works on a level for children where they can do what they like or where they have control."

The Board concluded that, under these particular circumstances, consumers "would rely on what might otherwise be slight differences between petitioner's OUTDOOR KIDS mark and respondent's KID'S OUTDOORS and design mark to distinguish the marks."

Taking into account all the relevant du Pont factors, the Board found that confusion is not likely.

Outdoor Kids?
(Click on photo for very large picture)

The Board then made short shrift of Petitioner's dilution claim, pointing out that proof of fame for dilution purposes must meet an even more stringent standard than that for Section 2(d) fame. Here, Petitioner failed to meet the latter standard, so there was no way in heck that it met the higher dilution standard.

TTABlog comment: One senses that the Board was not very sympathetic toward Petitioner, who had actually used its mark only on swimsuits and water bottles while relying on a trademark registration that included many "unused goods." That's just my feeling and/or hunch.

Photograph and text Copyright John L. Welch 2001, 2009.

posted by John L. Welch @ 3/17/2009   0 comments

Monday, March 16, 2009

Carroll Shelby's Cobra Design Marks Survive Feeble TTAB Challenge

Unique Motors spent more than seven years on the TTAB track, but got nowhere in its oppositions to registration of the product configuration marks shown below, for automobiles. Unique, a maker of replica Cobra vehicles, pleaded lack of acquired distinctiveness, abandonment, genericness, and fraud, but it made a big mistake: Unique failed to submit any admissible evidence during its testimony period. Unique Motorcars v. Carroll Hall Shelby Trust, Oppositions No. 91150352 and 91155242 (March 4, 2009) [not precedential].

Unique did submit one item of evidence during its testimony period: a discovery deposition of its own witness. That was plainly improper, and the deposition was stricken on Shelby's motion. Shelby could then have moved for judgment based upon Unique's failure to present a prima facie case [TTABlog query: why couldn't the Board just pull the plug right there?], but instead Shelby decided to proceed with its case. An evidentiary carwreck ensued.

Shelby submitted thousands of pages of evidence by way of notice of reliance, but none of its was appropriate for such a notice. However, Unique did not object to admissibility, and in fact relied on much of Shelby's evidence in its own briefs. Nor did Unique object to evidence Shelby submitted after Unique had filed its main brief. So the Board chose to consider all of Shelby's evidence.

Unique did submit evidence with a rebuttal notice of reliance, some of which was excluded in response to Shelby's objection, as was evidence submitted for the first time with Unique's main brief.

Acquired Distinctiveness: Because Shelby sought to register its designs under Section 2(f), Opposer Unique had the initial burden of coming forward with evidence challenging or rebutting Shelby's 2(f) evidence. If that initial burden were met, the ultimate burden of proof would shift to Shelby. However, Unique failed to meet this initial burden because all its evidence submitted during its testimony period had been stricken. End of story.

Abandonment: Unique argued that because Shelby had stopped making its automobiles from 1970 to 1990, the subject marks had been abandoned. However, Shelby's uncontroverted testimony established that since 1989 he has been building and selling his Cobra 427s. Since priority is not in issue here (there was no Section 2(d) claim), Shelby's purported abandonment of the marks for 20 years is irrelevant here.



Genericness: Unique contended that dozens of automobile manufacturers have made and sold replicas of Shelby's designs, without control by or permission of Shelby. The Board noted the paucity of its precedents on the issue of genericness of designs. However, the CAFC and other courts have recognized such a claim for common, non source-identifying designs.

Unique's witness testified that in 2006 there were 25 to 26 Cobra replica builders in the United States, that such companies go in and out of business over the years, and that his company had sold about 300 replicas. The Board, however, found the evidence insufficient to show that these designs "are so common in the industry that they cannot be said to identify a particular source."

At a minimum, the evidence does not reflect when the third-party manufacturers sold their replicas, how many they sold or the market share of opposer and the third-party manufacturers. Without such evidence, we cannot conclude that the configurations are generic.

As to Shelby's alleged failure to police infringers, the Board noted that "complete failure to police the product design is evidence that a product configuration is generic." For this discussion, the Board assumed arguendo that there are third-party manufacturers "with more than a minor market share."

Mr. Shelby testified that he sent six to eight letters to replica manufacturers beginning in 1990, and that Shelby's counsel sent three letters in 2008. In addition, Shelby commenced two legal proceedings involving its product configurations. The Board therefore accepted that "Mr. Shelby had made some effort to protect the configurations which are identified in the subject applications. This evidence of policing favors applicant and weighs against opposer's claim that the configurations are generic."

The Board concluded that Unique had failed to meet its burden to prove genericness by a preponderance of the evidence.

Fraud: Unique failed to discuss its fraud claim in its brief, so the Board deemed it waived.

Finally, in its brief, Unique trotted out three unpleaded claims, two of which were the subject of some evidence: res judicata and laches.

Res Judicata: Unique argued that the Board is bound by a 2002 decision of the U.S. District Court for the District of Massachusetts, in which the court dismissed Shelby's trade dress claims on summary judgment because Shelby had failed to prove acquired distinctiveness.

The Board ruled that res judicata (claim preclusion) does not apply here because the issue of acquired distinctiveness in the Massachusetts case is not the same as that in this proceeding: first, the court did not apply the same burdens of persuasion as are applicable here; and second, "acquired distinctiveness must be considered in view of the facts that exist at the time registrability is being considered." In short, "facts based on events occurring subsequent to the filing date of the application may be considered."

Laches: Unique argued that Shelby was guilty of laches due to its delay in seeking to register the marks. The Board, however, pointed out that laches is an affirmative defense, not a ground for opposition.

And so, the Board dismissed the oppositions.

TTABlog comment: It seems that Unique's best claim, lack of acquired distinctiveness, was simply thrown out the window by its failure to gets its evidence into the record at the right time.

Suppose Unique were to seek review of this decision by way of civil action under 15 U.S.C. Section 1071(b), and it submitted its evidence during its case-in-chief? Different story?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/16/2009   0 comments

Friday, March 13, 2009

TTABlog Twin-Bill: Two More "Bad Specimen" Cases To Ponder

Today we have two more "bad specimen" cases that, for better or worse, were taken up on appeal. In the first, Applicant Atlas Media (who beat a bad-specimen rap in January [TTABlogged here]), was hoping to register the mark HOW NOT TO DIE for a television program about longevity. But its specimen of use (immediately below) was dead on arrival. In re Atlas Media Corp., Serial No. 76685286 (March 6, 2009) [not precedential].


The specimen comprised a sheet of paper that Applicant characterized as promotional material. Examining Attorney Rudy R. Singleton pointed out that the specimen included no reference to a television program, and so consumers "will not perceive the involved mark as identifying the source of such services."

Atlas's attorney, Myron Amer, submitted a declaration of its president, stating that Atlas owns several service mark registrations for television services and that "the specimen of record is the practice in the trade of carrying on the business of the registrations." In other words, that's how they do it in the tv business.

The Board observed that under Rule 2.56(b)(2), a "service mark specimen must show the mark as actually used in the sale or advertising of the services." Section 45 says that a service mark is used in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

However, "[i]t is not enough that the term alleged to constitute the mark be used in the sale or advertising; there must be a direct association between the term and the services. *** The mark must be used in such a manner that it would be readily perceived as identifying the source of such services."

Nowhere is a television program mentioned on Atlas's specimen, and so "the required direct association between applicant’s mark HOW NOT TO DIE and the identified services cannot be made by consumers."

Even accepting Atlas's assertion that it does offer television programs under the mark, that is not the question here. "Our task in this ex parte appeal is to determine whether the specimen of record evidences service mark use of HOW NOT TO DIE for the identified services."

The Board concluded that it does not, and so this application kicked the proverbial bucket.


In the second case, it was a trademark specimen that failed to pass muster. Applicant Mississippi Cheese Straw Factory applied to register the mark MUDPUPPIES for cookies, but its specimen of use (shown in part below) was at most half-baked. In re Mississippi Cheese Straw Factory, Inc., Application Serial No. 76617223 (March 3, 2009) [not precedential]


The specimen was a website order form that Examining Attorney Allison Holtz found unacceptable because it did not show the mark "in close proximity to a picture of the goods."

Applicant Mississippi argued that "the order form is reached by clicking the 'store' link from the preceding page which shows the cookies and tins in which the products are sold. In other words, the consumer must view such picture in order to reach the order form that comprises the Applicant’s tendered specimen." Thus, said Mississippi, the mark is in close proximity to a picture of the goods because it is just "one click away."

Mississippi accompanied its argument with a copy of the "preceding page" from the website, but it was unaccompanied by the supporting declaration required by Rule 2.59(b)(2), and so the Board refused to consider it as a specimen of use. Instead it focused on the original specimen and found it wanting:

We likewise agree with the examining attorney that the original specimen of use does not satisfy the requirements set out in the Lands' End and Dell line of cases for use as a display associated with the goods under Trademark Act § 45. Although this web page includes a means to purchase the goods, it clearly does not display the goods in association with the mark.

The Board opined that a specimen that spans two or more pages is "too attenuated, attenuated, particularly where the pages involved include multiple trademarks not all of which appear to be associated with the pictured goods."

And so the cookie crumbled badly for Applicant Mississippi.

TTABlog comment: The effort expended by these two applicants in seeking to register their respective marks was all for naught due to faulty specimens. Perhaps before filing, one should work with one's client to make sure that the mark to be registered is being used on at least one specimen that the PTO will find acceptable. This may require some modification of a website, or creation and dissemination of a new specimen, but that's better than what happened here, isn't it?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/13/2009   0 comments

Thursday, March 12, 2009

TTAB Questionably Shows a Second Red Card to "FUTBOLITO": Merely Descriptive for Game Tables, but Confusingly Similar to "MLS FUTBOLITO"?

The Major League Soccer season begins one week from today. We New England Revolution fans face the new season with hope and dread. Four times the Revolution have made it to the MLS Cup, the championship game, and four times they've lost. I'm not sure I can take another one. Anyway, what brings this all to mind is the Board's recent decision affirming the PTO's refusals of the mark FUTBOLITO as being merely descriptive of soccer goals and game tables, and likely to cause confusion with the registered mark MLS FUTBOLITO for soccer entertainment services. The first affirmance was a slam dunk (or in soccer parlance, a "sitter"), while the second was a bit of a knuckleball: difficult to grasp. In re Allen Batres Miranda, Serial No. 77135681 (February 11, 2009) [not precedential].


Section 2(e)(1) Mere Descriptiveness: The Board noted that the term "futbolito" combines the Spanish word for soccer ("futbol") [TTABlog comment: Actually, I think it's the Spanish word for "football"] with the Spanish diminutive suffix "ito," which indicates small size. Examining Attorney Gina Hayes submitted Internet evidence showing that "soccer games with fewer than the regulation number of players may be called 'futbolito.'" Wikipedia evidence indicated that the soccer-themed table-top game sometimes called "foosball" is also known as "futbolito."


Thus the evidence demonstrated that FUTBOLITO is merely descriptive of Applicant Miranda's soccer goals (which could include smaller goals invented for games involving a few players) and of his "game tables" (which could include futbolito tables).

Likelihood of Confusion: Beginning its du Pont analysis with a comparison of the marks, the Board found them "very similar" in connotation or commercial impression because "both are dominated by the term 'futbolito.'" [TTABlog comment: Really? It seems to me that MLS is the dominant term in the cited mark, since FUTBOLITO is at least merely descriptive and has to be considered a weak formative.]

As to the MLS portion of the cited mark, "[c]onsumers are ... likely to attribute this portion of registrant's mark as being merely the trade name (or house mark) of the entity that is the source of the FUTBOLITO services." [TTABlog comment: What? Merely the trade name of the source? Merely? Isn't the trade name a much stronger part of the mark than the descriptive word FUTBOLITO?]. The Board concluded, rather mystifyingly, that the marks are "highly similar in appearance, sound and connotation."

Miranda argued that the cited mark should be accorded a narrow scope of protection, since FUTBOLITO is suggestive of the goods and services. The Board agreed that FUTBOLITO is suggestive of registrant's services, but maintained that it "cannot make such a finding as to the registrant's use of the term FUTBOLITO."

The validity of the registration for the cited mark is not a question before us in this appeal and the registration must be accorded the full benefits to which it is entitled under Section 7(b) of the Trademark Act. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Moreover, we note that there is no disclaimer of the term FUTBOLITO in the cited registration, nor is there any claim of acquired distinctiveness by registrant. And notwithstanding any suggestiveness of FUTBOLITO in the registered mark, we do not find the mark to be so weak as to prevent protection against registration by a subsequent user of the same or very similar mark for related goods and/or services.

[TTABlog query: What's wrong with recognizing that FUTBOLITO is a weak formative and that MLS is the stronger part of the cited mark? Oops, sorry. The Board already decided that FUTBOLITO is the stronger part].

Turning to the goods and services, the Board relied on three use-based third-party registrations to show that "various trademark owners arrange or conduct athletic competitions for entertainment purposes under the same mark as goods, including sports equipment and board games." Although admittedly a "relatively small" number, three was enough for the Board when coupled with the recognition (judicial notice?) that "the licensing of commercial trademarks on 'collateral' goods has become a part of everyday life." [TTABlog comment: Although the evidence was weak on this point, it's difficult to argue that, in reality, the goods and services here are not related].

Finally, the Board noted that any doubt as to the likelihood of confusion issue must be resolved in favor of the prior registrant.

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


TTABlog final comment: The Board's citation of the Dixie Restaurants case is curious. There the mark THE DELTA CAFE & Design ["CAFE" disclaimed] was found to be confusingly similar to the registered mark DELTA, both for restaurant services. Applicant Dixie unsuccessfully argued that DELTA must be considered a weak mark because of its geographical connotation. Instead, the appellate court agreed with the TTAB that DELTA is the dominant portion of THE DELTA CAFE, and it affirmed the refusal. That approach to the marks is the opposite of the Board's approach here.

Compare and contrast the FUTBOLITO decision with the recent MOCCA case, in which MOCCA was found to be merely descriptive of ground coffee, but not confusingly similar (according to the panel majority) to the mark MOCA & Design for coffee [MOCA disclaimed]. [TTABlogged here].

Michael E. Hall, at his new blog, Registration Ruminations, provides his more scholarly comments on the FUTBOLITO and MOCCA decisions here.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/12/2009   0 comments

Wednesday, March 11, 2009

TTABlog Job Posting: Michael Best & Friedrich Seeks TM Associate for Milwaukee Office

Michael Best & Friedrich LLP is seeking a trademark associate with 1-3 years of experience for its Milwaukee office. If interested, please contact the firm directly.


Founded in 1848, Michael Best has earned a reputation as a leading law firm in the Midwest. The firm has provided intellectual property services to clients for more than 100 years and is ranked as one of the top 25 intellectual property litigation firms by IP Law & Business (July 2008) and one of the top 25 trademark firms in the nation by Intellectual Property Today (May 2008).

Michael Best has an excellent opportunity in our Milwaukee office for an associate with 1-3 years of trademark prosecution and client counseling experience. All candidates must have strong academic credentials to be considered. Resume, transcripts (both law school and undergraduate), references and a writing sample should be submitted with all initial inquiries via our online submission process at michaelbest.com.
.

posted by John L. Welch @ 3/11/2009   0 comments

Finding "ACURA" and "RL" Too Far Apart on Specimens, TTAB Affirms Refusal of "ACURA RL" for Autos

Applicant Honda's specimens of use for the mark ACURA RL for "automobiles and structural parts therefor" were not in accord with PTO requirements because they "left the impression" of two marks rather than one. And so the Board affirmed the PTO's refusal to register in light of Honda's failure to provide an acceptable specimen of use. In re Honda Motor Co., Ltd., Serial No. 77044023 (February 23, 2009) [not precedential].

Original Specimen

The Board began its opinion with a discussion of Honda's attempt to belatedly introduce evidence after it filed its notice of appeal. Strangely, Honda first argued it was "never specifically advised ... that it could submit evidence or argument in an attempt to convince the examining attorney that the requirement itself [for a new specimen] was incorrect." Later it argued that it did not submit evidence during prosecution because "it may have been counter-productive to do so because applicant feared that the examining attorney might be stubborn." The Board was unmoved by these unusual arguments, and it refused to consider the late evidentiary submissions.

As to the specimens of use, Examining Attorney April K. Roach advised Honda that the original specimen [above] was unacceptable because ACURA and RL "appear as separate marks."

Honda submitted a substitute specimen [below], comprising the cover of the owner's manual for an auto. Again the Examining Attorney found the specimen inadequate for the same reason.

Substitute Specimen

The Board observed that under Trademark Rule 2.56 an application must include a specimen of the mark as used, and under Rule 2.51(a) the application must include a drawing of the mark that is a "substantially exact representation of the mark as used on or in connection with the goods ...." In short, the drawing and the specimen have to match.

The Board found this case to be on all four wheels with In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977), in which the Board refused registration of the logo mark shown here because on the specimen of use the word AUDI appeared over the tail light on one side of the car trunk, while the word FOX and the foxhead design appeared over the other tail light. (see below). Said the Board, "Everything depends on the specimens, which, in this case, show the use of two discrete marks."


Honda feebly argued that, unlike in Audi, its mark is a standard character mark, but the Board shrugged that off: "[r]egardless of the type of drawing in the application, the specimens must indicate use of the applied-for matter as a mark - i.e. as a single mark."

The Board concluded that, as in Audi, "the impression left by the specimens of record is that of two marks, rather than one."

As used on the first specimen – applicant's vehicle – the word ACURA appears on the far left side of the trunk of the car, while the letters "RL" appear on the far right. The two marks are separated by applicant’s corporate "A" logo, the trunk handle, and considerable space. As in Audi, we find that the likely impression here is that ACURA is the trademark for a line (or "make") of cars, while RL is a trademark for a particular "model" of that line.

Honda's second specimen was no better than the first:

The two elements are physically separated by a significant amount of blank space and the numerals "2004." "ACURA" is depicted in black in close proximity to applicant's logo, while the letters RL appear in a different font, different color, and different size. As was the case with the specimen depicting the rear of applicant's vehicle, we do not believe that a relevant consumer viewing applicant’s owner’s manual would understand the terms "ACURA" and "RL" to comprise a single mark, rather than two.

And so the Board ruled that Honda had failed to comply with Rule 2.51, and it affirmed the refusal to register.

TTABlog comment: Is the Board being a bit hypertechnical here? Don't consumers identify this car as an ACURA RL? Aren't consumers accustomed to seeing the make and model of a car displayed across the trunk lid? Doesn't a consumer pretty much automatically associate the two terms together: make and model?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/11/2009   0 comments

Tuesday, March 10, 2009

Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle

Another product configuration "mark" bit the TTAB dust when the Board affirmed the PTO's refusal to register the purported mark shown below (consisting of a "round disk head on a sprayer nozzle") for "metal spray nozzles." The Board found the design to be functional under Section 2(e)(5), and alternatively found that it fails to function as a mark, under Sections 1, 2, and 45. In re UDOR U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) [precedential].


Functionality: As usual, the Board applied the CCPA's four-factor analysis set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982), which requires the Board to consider (1) whether a utility patent discloses the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) the availability of functionally-equivalent alternatives; and (4) whether the design results from a comparatively simple or cheap method of manufacture.

The Board first closely examined Applicant UDOR's U.S. Patent No. 7,108,204 , entitled "Spray Nozzle," for any disclosed utilitarian advantages of the above design. [Tip from the TTABlog: you may find this patent readily via the GOOGLE Patents search engine]. The Board concluded that the PTO Examining Attorney had not "demonstrated convincingly that the round shape of the nozzle head has inherent utilitarian value based upon the claims of the patented technology." In short, what is shown in the trademark drawing does not "serve a function within the terms of the utility patent."

While it is true that all the embodiments depicted in drawings in the patent do involve a round head, none of the utility patent claims refer to a rounded spray nozzle head. Rather it is the design of the impingement surface and the deflection ridges alone that determines the discharge pattern of the fluid from each nozzle head. The novel and non-obvious features claimed for this patented spray nozzle would function identically, irrespective of the shape of the portion of the spray nozzle head visible in the trademark product design configuration.

Turning to the second Morton-Norwich factor, the Board found nothing in UDOR's advertising that touted the utilitarian advantages of the product design sought to be registered. In fact, the advertising of record suggested that consumers "look for" the "unique round head shape" for UDOR's sprinkler nozzles.


As to the third factor, the Board analyzed the availability of alternative designs to help it determine whether the proposed mark "is functional in the first place." The record showed that UDOR's competitors market spray nozzles with quite similar round heads, an impingement surface, and a gap for a pressurized fluid plume. The Board concluded that the round head "is the preferred shape of a metal spray nozzle tip," noting that "[t]his would appear to be an obvious conclusion from the standpoint of design, manufacture, storage, shipping and handling." Therefore, this factor supports a finding of functionality.


Finally, as to factor 4, the Board concluded that, as with the third factor, the round disk shape of UDOR's nozzle head "appears to be efficient, economical, and advantageous."

In sum, the Board found that under the third and fourth Morton-Norwich factors, Examining Attorney Shaila E. Settles had established a prima facie case that the subject design is functional, and that UDOR failed to overcome that showing.

Failure to Function: Assuming arguendo that UDOR's product design is not functional, the Board considered whether the design is registrable based upon acquired distinctiveness. [As we all know, a product design cannot be inherently distinctive. See Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068-69 (2000)]].

UDOR's product design "comprises an ordinary device such that many third parties are using similarly-shaped configurations." Like a highly-descriptive mark, this product design may not be registered "except upon a substantial showing of acquired distinctiveness."

Absent from UDOR's evidence were any statements from the ultimate users of the device; the few declarations from the industry are "simply insufficient." Although UDOR has employed "look for" advertising, there was no evidence of its effectiveness. Nor was there evidence of UDOR's sales under the mark.

Consequently the Board concluded that UDOR's evidence was insufficient to prove acquired distinctiveness, and it affirmed this alternative refusal to register.

TTABlog comment: If you want to see how hard it is to overcome a Section 2(e)(5) functionality refusal for a product configuration, stick the word "functional" into the TTABlog search engine above and peruse the results.

BTW: the article I wrote in 2004, entitled "Trade Dress at the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will," still resonates five years later.

Text Copyright John L. Welch 2009

posted by John L. Welch @ 3/10/2009   0 comments

Monday, March 09, 2009

Precedential No. 5: Board Shows Mercy, Forgives Cancellation Petitioner Who Served Petition One Week after its Electronic Filing

Rule 2.111(a), effective November 1, 2007, requires that a petition for cancellation "include proof of service on the owner of record for the registration." The Equine Touch Foundation filed a Petition for Cancellation electronically on October 10, 2008, indicating on the ESTTA form that service had been made on registrant that same day. However, Petitioner in fact had not made service. What would the Board do? The Equine Touch Foundation, Inc. v. Equinology, Inc., 91 USPQ2d 1943 (TTAB 2009) [precedential].


Of course, if this were an opposition proceeding, the "plaintiff" might have been thrown off the TTAB track. See Springfield, Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) [precedential] [TTABlogged here]. [Opposition filed on last day of opposition period dismissed as a nullity because Opposer had failed to serve Applicant].

However, cancellation proceedings are a different breed. As long as Petitioner filed and served its Petition for Cancellation (on the ground of mere descriptiveness) within five years of the registration date, the petition would be timely. [See Section 14 of the Trademark Act.] Here, the challenged registration issued on September 14, 2004, and so Petitioner had until September 14, 2009, to properly file its petition.

On October 9, 2008, counsel for petitioner informed the Board of the mistake, stating that he had "interpreted the TBMP as excusing the petitioner from making service because the the TTAB would make service." [TTABlog note: the TBMP hasn't been revised in five years]. Because Petitioner acknowledged its mistake, served the petition on Registrant's counsel (October 16), and moved swiftly (October 17) to seek amendment of the petition to state when service had actually been made, the Board gave Petitioner a break:

Inasmuch as petitioner acted promptly to cure its acknowledged failure of service, and given the fact that this petition would not be time-barred as of the date of actual compliance with the service requirement, petitioner cured the defective filing by its amendment of the proof of service. Therefore, the Board will not dismiss this petition as a nullity but instead will accord the petition a new filing date of October 17, 2008, which is the date of such amendment.

Petitioner's counsel made one more teensy-weensy mistake, which the Board also forgave. Service was made on Registrant's counsel rather than on Registrant, although Rule 2.111(b) states that the petition "is to be served on the owner of the registration or its domestic representative, if one has been appointed, at the correspondence address of record for the owner or domestic representative, if any." But since Respondent filed an answer to the petition on November 17, 2008, the Board let it go.


Tip from the TTABlog: Don't horse around! Read the rules or you may never get out of the starting gate.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/09/2009   0 comments

Friday, March 06, 2009

Giving Added Weight to the Rareness Factor, TTAB Reverses Surname Refusal of "BERGFELD" for Wine

Perhaps the TTAB is moving toward adoption of Judge Seeherman's enlightened view of the Section 2(e)(4) surname refusal, a view expressed in her concurring opinion in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential]. [TTABlogged here; further discussion in Section IV of this article]. The Board reversed a Section 2(e)(4) refusal of the mark BERGFELD for wine, giving "much more weight" to the first Benthin factor (the rareness of the surname) than the other three factors. In re Hall Wines, LLC, Serial No. 78926151 (February 10, 2009) [not precedential].


Applying the standard four-factor analysis for surname refusals, the Board considered: (1) the degree of the surname’s "rareness"; (2) whether anyone connected with applicant has the mark as a surname; (3) whether the mark has any recognized meaning other than as a surname; and (4) whether the mark has the "look and sound" of a surname.

As to the first factor, it concluded that BERGFELD is an "extremely rare surname." The PTO's evidence showed fewer than 300 individuals with that surname. The Board recognized that there are many past cases in which a surname was held to be rare but unregistrable with fewer than 300 "hits," but also many Board decisions in which a surname was held to be registrable despite more than 300 hits. "In other words, there remains no threshold number of surname listings upon which we base our decisions."

However, we believe it is important to accord the proper weight to the "rareness" of the surname factor while keeping in mind the purpose of Section 2(e)(4) of the Act. As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 at 1924 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..."

In other words, the Board agreed with Judge Seeherman's view that "rareness" is the most important factor in the surname analysis. In short, if there are not many people with the surname in question, then it is less likely that any person will be affected by registration of the surname as a trademark or service mark for particular goods or services, and applying the Section2(e)(4) bar is less important.

Turning to the other factors, as to the second there was no doubt that the mark BERGFELD is derived from Robert Bergfeld, a pioneering early-20th century wine grower (referred to at Applicant's website). However, Applicant's counsel offered evidence that the term refers to an historic building at the winery, and indeed Applicant's label depicts the "Bergfeld" building. Moreover, no one associated with Applicant has or ever had that surname. So this factor did not weigh in favor of a surname refusal.

As to the third factor, Applicant failed to convince the Board that BERGFELD has a recognized meaning other than as a surname.

As to the fourth factor, whether the mark has the "look and sound" of a surname (a factor which Judge Seeherman particularly criticized), the PTO submitted evidence of other surnames that either begin with "berg" or end with "feld," as well as a website posting, "How to recognize Jewish names," which listed "names ending '-feld'." Applicant, on the other hand, contended that BERGFELD mark is "reminiscent of a city name..., e.g., Hatfeld, Heidelberg, Hardfeld, Bonfeld and Heimfeld." Noting that this fourth factor is "very subjective," the Board could draw no conclusion either way.

Balancing the four factors, the Board made "no secret that the first factor, rareness of the surname, has been given much more weight than the other three factors. And, in doing so, we find that any slight tilt toward finding the mark as being primarily a surname based on the other factors is outweighed by the fact that there are fewer than 300 persons with the surname 'Bergfeld.'"

And so, the Board reversed the refusal.


TTABlog comment: Hooray! Judge Seeherman's concurring opinion in Baik deserves a thoughtful reading, as do her subsequent comments in In re Marriott Int'l, Inc., Serial Nos. 78489804 and 78489829 (November 23, 2007) [not precedential] [TTABlogged here] and in In re Curlin Medical Inc., Serial No. 78560314 (February 11, 2008) [not precedential] [TTABlogged here] .

Judge Seeherman's dissent in In re Builder's Best, Inc., Serial No. 76642671 (April 30,2008) [not precedential], provided some additional insight into her reasoning. There, the panel majority found the mark LOWES for dryer vent ducts to be primarily merely a surname. For Judge Seeherman, however, the dispositive factor was that "LOWES is an extremely rare surname." She recognized that in some precedential decisions, the fact that a surname was rare did not shield it from a Section 2(e)(4) refusal. "In those cases, the Board and the courts looked to other factors, such as whether the term would be perceived as a surname because, for example, it was the name of someone associated with the applicant, or because it was the name of someone who had public recognition." However, many of those cases were decided prior to the availability of computer databases, and the Board and courts were concerned that print directories were just the "tip of the iceberg." Now, however, computer databases allow the Board to determine whether a term is "truly a rare surname."

In footnote 10, the panel here picked up on the point about computer databases:

We do note, however, that the electronic databases available to examining attorneys today are far more comprehensive and current than the reference materials available in the past; thus, we can presume that the number of persons listed (absent duplicative entries) is a fairly accurate estimation of the number of individuals with the surname in the entire United States.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/06/2009   0 comments

Thursday, March 05, 2009

TTAB Affirms PTO Refusal to Amend "FIT TEST" Application from Services to Goods

Applicant Aurel A. Astilean and his Application failed to fit the PTO test when he attempted to register the mark FIT TEST for "fitness exercise and instruction, not including fitness testing or assessment in a health club." The problem arose because Astilean's specimen of use was a photocopy of the opening screen of an exercise DVD. Examining Attorney Andrea P. Butler found the specimen unacceptable for the recited services. Astilean tried to amend the application from Class 41 services to Class 9 goods, but that was a no-go as well. In re Aurel A. Astilean, Serial No. 76688551 (February 9, 2009) [not precedential].


As to the attempted amendment of the application to class 9, the Board agreed with the PTO that "applicant's proposed amendment does not merely clarify or limit the original identification of services, but rather impermissibly broadens it" in violation of Rule 2.71(a).

The Board did not disagree with Attorney Myron Amer's assertion that there is no per se rule prohibiting amendment from goods to services, or vice versa. But TMEP Section 1402.07(b) provides that such an amendment is permitted only "when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification."

Here, the identification of services is not ambiguous as to whether it identifies goods or services. It "clearly and definitely sets forth Class 41 services; it cannot be read as potentially or ambiguously identifying Class 9 goods as well."

The Board therefore found that the PTO had properly rejected the proposed amendment.

The Board then turned its gaze to Astilean's specimen in order to determine the propriety thereof. It observed that a service mark specimen "must show the mark as actually used in the sale or advertising of the services," Rule 2.56(b)(2), and that the specimen "must show an association between the mark and the services for which registration is sought." In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §1301.04(b).

Astilean's original specimen (shown above) was "a DVD of exercises contributing to fitness." The Board found it unacceptable for the services identified.

Astilean's substitute specimen of use (shown below)consisted of "merely a sheet of paper upon which the words FIT TEST are stamped." Therefore, the Board held, it was likewise an unacceptable specimen.


And so, without further adieu, the Board affirmed the PTO's refusal to register.

TTABlog comment: I was talking with someone yesterday about the movie, "Cool Hand Luke" and the famous line, "What we have here is a failure to communicate." Apparently that's what happened when this application was filed.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/05/2009   0 comments

Wednesday, March 04, 2009

Divided Board Panel Affirms Mere Descriptiveness Refusal of "STEELWORKERS," Finds 2(f) Evidence Insufficient

A divided Board panel affirmed a refusal to register the collective membership mark STEELWORKERS for "indicating membership of a[n] (sic) labor organization," finding the mark highly descriptive of the membership of Applicant's organization, and Applicant's evidence of acquired distinctiveness insufficient to overcome the refusal. Judge David Bucher, in dissent, maintained that the majority had applied too high a standard for the Section 2(f) evidence, and that under the circumstances Applicant had provided sufficient evidence to overcome the Section 2(e)(1) refusal. In re United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union AFL-CIO.CLC, Serial No. 78815310 (February 27, 2009) [not precedential].



The Examining Attorney argued that STEELWORKERS identifies a significant attribute of Applicant's organization, namely that the membership is comprised, in part, of steelworkers. All three panel members agreed, and Applicant conceded, that the mark is merely descriptive.

Moreover, the panel majority, consisting of Judges Holtzman and Ritchie, agreed with the PTO that STEELWORKERS is highly descriptive "of that aspect of the organization." Noting that "the more descriptive the term, the heavier the burden," the panel gave low marks to Applicant's scant evidentiary offerings. Applicant submitted a declaration of five-years' use and referred to its "50 plus years" of use of the mark, but submitted no verification of the latter. The five-year declaration alone, the Board observed, has been consistently held to be insufficient when the term sought to be registered is highly descriptive.

The panel majority found Applicant's evidence "conclusory" and lacking in sufficient detail as to the extent of media recognition and exposure. Consequently, the majority found the 2(f) evidence inadequate, and it affirmed the refusal.


Dissenting Judge Bucher agreed with Applicant that the mark STEELWORKERS is not "highly descriptive." Most of Applicant's members are involved not in steelworking but in many other occupations, and only some small minority is involved in steel-related work.

When used as a collective membership mark, [STEELWORKERS] readily reflects membership in a labor union - not the more limited occupational setting from which applicant's early members were drawn.

Judge Bucher therefore would not impose the same "heavy burden of proving acquired distinctiveness" as the majority.

Judge Bucher recognized that Applicant's attorney could have done a better job and that the record evidence was meager, but he "would argue that the modicum of evidence that emerges from this record should be deemed sufficient to establish acquired distinctiveness under the circumstances of this case."

[A]pplicant is the largest industrial labor union in North America. There is no compelling public policy reason why the term “Steelworkers” should be kept available for other labor organizations to use to identify their membership. I would argue that the Office has the latitude on this record to accept as true applicant’s decades of nation-wide usage, crediting skimpy evidence (yes, admittedly hearsay evidence of applicant’s history for almost seventy years and its approximately 800,000 union members, references to applicant as “Steelworkers” in a Supreme Court case way back in the 1950’s, political buttons depicting the names and/or images of candidates for many national presidential elections, etc.) as being sufficient to match a lowered level of descriptiveness.

TTABlog comment: I agree with Judge Bucher that the panel majority's slapping of the "highly descriptive" tag on Applicant's mark was questionable, and that in the real world STEELWORKERS identifies Applicant. As Judge Bucher eloquently put it, the Board was probably "watching the wrong rat hole with this decision."

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/04/2009   0 comments

Tuesday, March 03, 2009

Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive

In a case of first impression, the TTAB held that a sound mark for goods that make the sound in their normal course of operation, cannot be inherently distinctive and may be registered only upon proof of acquired distinctiveness. Applicant Vertex sought to register an alarm sound for a "personal security alarm in the nature of a child's bracelet to deter and prevent child abductions" and for "personal security alarms." Because Vertex did not seek to register the mark based on acquired distinctiveness, the Board deemed the mark unregistrable for that reason alone, and it also affirmed the PTO's two refusals to register on the grounds that Vertex's sound mark is functional under Section 2(e)(5) and fails to function as a trademark for the goods (Sections 1, 2, and 45). In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) [precedential].


Applicant Vertex sought to register a sound consisting of "a descending frequency sound pulse (from 2.3kHz to approximately 1.5kHz) that follows an exponential, RC charging curve, wherein said descending frequency sound pulse occurs four to five times per second, and that over a one second period of time, there is alternating sound pulses and silence with each occurring approximately 50% of the time during a one second period of time." [A recording of the sound may be found here]. Vertex submitted a Statement of Use in the bracelet application but not in the other.

Vertex asserted, of course, that its sound mark is not functional and is inherently distinctive. It submitted considerable evidence showing use of the sound for a combination watch and personal alarm for children, called the "AmberWatch."

After reviewing the relevant case law on sound marks (particularly In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978)), as well as the Supreme Court's decisions in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) [product design cannot be inherently distinctive] and Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995) [color cannot be inherently distinctive], the Board ruled that "[w]hen a sound is proposed for registration as a mark on the Principal Register, for goods that make the sound in their normal course of operation, registration is available only on a showing of acquired distinctiveness under Section 2(f)."

Since Vertex did not seek registration under Section 2(f), and since its alarm sound mark may be registered only upon a finding of acquired distinctiveness, the Board held that refusal to register is appropriate on that ground.

However, it went on to review and affirm the two grounds for refusal maintained by the PTO: functionality and failure to function as a trademark.

The Board first considered the failure-to-function refusal. [TTABlog comment: It seems to me that the functionality discussion should come first, since that refusal is fatal to the applications and (unlike failure-to-function) cannot be overcome by proof of acquired distinctiveness. The failure-to-function refusal is then an alternative refusal, leading to the ruling on acquired distinctiveness.]

In any event, the Board reviewed the evidence submitted by Vertex and found nothing that promoted recognition of the alarm sound as a source indicator (e.g., no "listen for" advertising) and nothing that educated the consuming public to the "assertedly distinctive aspects of the sound."

As to functionality, the Board applied both the Supreme Court test set out in Qualitex, quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1 (1982), and in TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), and the test set out by the CCPA in In re Morton-Norwich Products, Inc., 213 USPQ 9 (CCPA 1982).

Under the Supreme Court's test, the Board found that the use of an audible alarm is functional because it is "essential to the use or purpose of applicant's products." The evidence showed that the use of a loud alarm is important, and that alternating sound pulses and silence provides a "more effective way to use sound as an alarm than is a steady sound."

Applying the four Morton-Norwich factors, the Board noted that Vertex has a utility patent on a digital wristwatch with a "loud alarm." Vertex's advertising "extols the loudness of the alarm." Competitors would need to use a loud alarm comprising alternate pulses of sound and silence, and registration of Vertex's sound would deprive competitors of many of the available possibilities. Vertex argued that there are "thousands of specific frequencies within the range that is most suitable for use in alarms," but the Board was not impressed:

What applicant's argument fails to appreciate, however, is that the description of its mark only specifies that its sound pulse is between 1500 Hz and 2300 Hz. Based on this description, applicant would be free to combine sound pulses for any of the frequencies within this range, a large swath of the optimal range of 1000 Hz to 3000 Hz. While there may indeed be countless combinations of frequencies available for personal alarms utilizing the frequencies within the optimal range, registration of applicant’s sound as described would deprive competitors of many of those options. It matters not that applicant's actual sound may currently use only a handful of particular frequencies, for it would be free to change the combinations at any time and still have its sound fall within the ambit of the description. This factor favors a finding of functionality.

As to the fourth factor, the sound of the product has no bearing on the cost or ease of manufacture.

Weighing all the Morton-Norwich factors, the Board concluded that the mark is functional and unregistrable.

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/03/2009   0 comments

Monday, March 02, 2009

TTABlog New Job Posting: Milwaukee Office of Godfrey & Kahn Seeks IP Generalist

Godfrey & Kahn is seeking an Intellectual Property Generalist for its Milwaukee office. (Details here).


Godfrey & Kahn, S.C., a general business practice firm with over 185 attorneys, has an excellent opportunity for an associate with two to four years experience to join our Intellectual Property practice area in the Milwaukee office.

The ideal candidate will have an electrical or mechanical engineering background with at least 2 years experience and already be admitted to the patent bar. The successful candidate will also have excellent academic credentials and the ability to assist in litigation, prepare and prosecute trademark and patent applications, support corporate transactions, and draft and negotiate technology agreements.


Please contact the firm directly.
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posted by John L. Welch @ 3/02/2009   0 comments

New TTABlog Trademark Jobs Posting

Trademark attorney with more than 15 years of law firm experience seeks new position, 15-30 hours per week in New York area, or by telecommute in other area. All aspects of trademark practice including searching and clearance, domestic and international prosecution, TTAB proceedings, licensing, enforcement and UDRP. Modest portables. Employment or independent contractor relationship. Email John Welch to set up an introduction. [Visit the TTABlog Trademark Jobs Blog (here).]
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posted by John L. Welch @ 3/02/2009   0 comments

TTAB Posts March 2009 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled seven (7) hearings for the month of March, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


March 4, 2009 - 10 AM: Ice Marketing Corp. v. Neutrogena Corp., Cancellation No. 92043193 [Section 2(d) petition for cancellation of a registration for the mark BODY CLEAR for acne preparations, based on allege prior rights in the same mark for skin care products, also involving standing and laches issues].


March 10, 2009 - 11 AM: In re Clarus Ventures LLC, Serial No. 78971994 [Section 2(d) refusal of the mark CLARUS & Design for “investment advisory and investment management services for private investment funds and private investments, and financial sponsorship of the formation of private investment funds, and management of private capital investment funds for others and private investments for others in the fields of health care and life sciences,” in view of the registered mark THE CLARUS GROUP “financial services, namely charitable estate planning and investment advice and management services”].


March 17, 2009 - 11 AM: American Girl, LLC v. Epstein, Opposition No. 91169029 [Opposition to AMERICAN BOY for clothing on the grounds of likelihood of confusion with, and dilution of, the mark AMERICAN GIRL, registered for clothing, dolls, and other goods and assorted services].


March 24, 2009 - 11 AM: Gibson Guitar Corp. v. Concordia Investment Partners, Inc., Oppositions Nos. 91156480, 91156482, and 91170847 [Section 2(d) oppositions to registration of the product configuration marks shown below, for guitars and guitar headstocks, in light of Opposer's previously used guitar designs and its registration for a "dove-wing" headstock].


March 25, 2009 - 2 PM: In re United Business Media, LLC, Serial Nos. 78537905 and 78537927 [Appeal from refusals to register the mark ANNUAL COMPUTER SECURITY CONFERENCE & EXHIBITION for arranging exhibitions and conference and for providing information online in the field of computer security, without disclaimer of the allegedly generic term COMPUTER SECURITY CONFERENCE].


March 26, 2009 - 11 AM: Paddington & Company Ltd. v. Lead Co., Ltd., Opposition No. 91150248 [Opposition to registration of the mark TEENIE WEENIE BEAR & Design in classes 16 and 25, on the grounds of lack of bona fide intent and likelihood of confusion with the design of Opposer's "Paddington Bear" for stuffed toys].


March 31, 2009 - 11 AM: Pleasant Travel Service v. Marisol, LLC, Cancellation No. 92044469 [Petition for cancellation of a registration for DON THE BEACHCOMBER for restaurant and bar services based on likelihood of confusion with Opposer's marks BEACHCOMBER'S and DON THE BEACHCOMBER for the same services].



Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/02/2009   0 comments