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TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!

Here are three darn good candidates for our WYHA collection. Each appeal involved a Section 2(e)(1) mere descriptiveness refusal, and each resulted in a TTAB affirmance. There’s a common thread to the arguments of the applicants, but it’s a losing thread. Would you have appealed in some, all, or any of these?


In re David Michael & Co., Inc., Serial No. 77296898 (May 5, 2009) [not precedential] involved the mark SLICEABLE SALSA for “individually wrapped portions of salsa” [SALSA disclaimed]. Applicant argued that the words, when combined, are “incongruous” and “inapposite.” The Board, however, opined that “it would not take any leap of logic for consumers looking at the mark and the identification to conclude that that the 'individually wrapped portions of salsa' are probably sliceable in some form.” Thus “someone who knows what the goods or services are will understand the mark to convey information about them.”

Moreover, Internet evidence (from a foreign website) showed that sauces can indeed be "sliceable." And, as the Board pointed out for the zillionth time, even if an Applicant is the first to use a descriptive term in connection with its goods, that does not make the term a source identifier.


In re Public Safety Health Systems, Inc., Serial No. 77204264 (May 12, 2009) [not precedential]. Applicant contended that the mark PUBLIC SAFETY HEALTH AND WELLNESS [with PUBLIC SAFETY disclaimed] is at most suggestive of “newsletters in the field of enhancing the well-being of public safety professionals,” asserting that “[t]here is absolutely nothing within the mark … that immediately tells anyone that it identifies newsletters in the field of enhancing the well-being of public safety professionals.” The Board, however, pointed out that it must “determine whether PUBLIC SAFETY HEALTH AND WELLNESS is merely descriptive as applied to he identified goods, not in a vacuum.”

The question whether a mark is merely descriptive is not determined by asking whether one can guess from the mark what the goods are, but rather by asking, when the mark is seen on or in connection with the goods, whether it immediately conveys information about their nature.

Applicant’s specimen of use stated that the newsletter is “committed to enhancing the safety and well being of public safety professionals,” and "health and wellness" is descriptive of the subject matter. Combining the two phrases creates no new or incongruous meaning.

palladium
In re Liberty Hardware Mfg. Corp., Serial No. 77075756 (May 13, 2009) [not precedential] concerned the mark PALLADIUM for “metal pulls and knobs for cabinetry” and “bath accessories, namely towel bars, towel rings, toilet tissue holders, and toothbrushbtumbler holders.” The PTO’s evidence showed that “palladium” is a color (apparently derived from the silver-white metal of that name) that is used for a variety of goods, and Applicant's own website showed its goods in a silvery color.

Applicant asserted that it chose the mark because of its association with historic theaters in London and the United States called “Palladium,” and it contended that because there are other meanings for ‘palladium” the term cannot be merely descriptive. The Board was unmoved:

[T]he fact that a term may have other meanings in different contexts is not controlling. Nothing in the record before us demonstrates that consumers would associate pulls and knobs for cabinetry, or bath accessories, with theaters, nor do we understand why applicant’s attempt to associate its goods with the trademarks or service marks of others should be a basis to find that the mark does not describe the color of applicant’s goods.

TTABlog comment: Well, WYHA? Of the three cases, the first one seems the most tempting, appeal-wise, since the idea of "sliceable salsa" is rather incongruous at first glance. This was an I-T-U application without a specimen of use, but the Examining Attorney never asked for more information regarding the goods. Had he done so, the record might have been clearer.

As to the other two, fuhgeddaboudit!

Text Copyright John L. Welch 2009.

On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions

Opposer H. Michael Bishop recently returned to the TTAB for another Board paddling. In September 2008, the Board dismissed two oppositions brought by Bishop because he had failed to timely submit any evidence and thus failed to prove standing or to establish either of his pleaded grounds for relief. [TTABlogged here]. On appeal, the CAFC remanded the case to the Board to consider in the first instance whether certain “admissions” made by Flournoy in her Answer to the notice of opposition provided Bishop with standing and satisfied his burden of proof to establish his claims of likelihood of confusion and fraud. As to standing, they did, but as to the claims, they didn't. H. Michael Bishop v. Marina Flournoy, Opposition Nos. 91175625 and 91175737 (May 15, 2009) [not precedential].


Reviewing Marina Flournoy’s answer, the Board found that she had admitted only that Bishop “used the mark in his artwork,” but she expressly denied that he had “a priority right in the mark.” [In light of the first admission regarding use, the Board assumed that Bishop had standing to bring his two claims.]

As to the likelihood of confusion claim, the burden to prove priority remained with Bishop in view of Flournoy’s denial. But Bishop failed to submit any competent evidence, and so he failed to meet that burden and his likelihood of confusion claim was dead.

As to Bishop's fraud claim, that was based on the assertion that the declaration accompanying Flournoy’s application was false in stating that she believed herself to be the owner of the applied-for mark and that no other person had the right to use the mark in commerce. Bishop had the burden to prove “not only that applicant’s declaration was false (i.e., that applicant did not have superior rights in the mark), but also that applicant knew or should have known that her oath was false.”

However, in her answer, Flournoy denied that Bishop’s rights were superior to hers.

Thus the burden was on Opposer Bishop to affirmatively prove the elements of his fraud claim: that he possessed superior rights to the mark and that Flournoy knew this to be the case. But because Bishop did not submit any evidence, he failed to meet that burden.

And so the Board again dismissed the oppositions.

Tip from the TTABlog: As previously stated, read the rules of the road before entering onto TTAB Boulevard.

Text Copyright John L. Welch 2009. Photograph Copyright John L. Welch 2008.

Divided TTAB Panel Disagrees over Doctrine of Equivalents, Reverses 2(d) Refusal of "ALLEZ FILLES!" Over "GO GIRL"

Just how and when to apply the doctrine of foreign equivalents continues to cause problems at the TTAB. In the latest contretemps, a Board panel divided on that issue, reversing a Section 2(d) refusal of ALLEZ FILLES! & Design for certain clothing items and related retail services, finding the mark not likely to cause confusion with the registered mark GO GIRL for various clothing items [GIRL disclaimed]. In re Helen Trimarchi and Michael Merr, Serial No. 77222086 (May 14, 2009) [not precedential].


The key issue, of course, was the similarity or dissimilarity of the marks, and particularly of the terms ALLEZ FILLES! And GO GIRL.

The Examining Attorney asserted that GO GIRL is the exact translation of ALLEZ FILLES, based upon a Babelfish translation, Applicant’s own translation of the mark as GO GIRLS!, and an e-mail from the PTO translator stating: “Yes, the translation of ALLEZ FILLES is ‘Go Girls.’”

Applicant contended that the phrase “allez filles!” is not proper French and that a consumer knowledgeable in French would likely interpret “allez filles!” as the proper French phrase – “allez les filles!” –which will be commonly translated as “let[’]s go girls!”, with the verb “aller” connoting a command to “hurry up!” or “come along"
or “get a move on.” On the other hand, “Go Girl” has an “urban” connotation like the “you go girl” phrase made popular by Oprah Winfrey.

Judges Kuhlke and Seeherman found that GO GIRLS is merely the literal translation of ALLEZ FILLES and that ALLEZ FILLES is not the equivalent of the idiomatic phrase "go girls." Moreover, it was not clear to the panel majority that that French speakers would even stop and translate this phrase because it is grammatically incorrect; French speakers may simply “take it as it is.’”

In view of the lack of equivalency based on the nonsensical translation from a grammatically incorrect French phrase and the idiomatic meaning of registrant’s mark, we find that any similarity due to the literal translation does not outweigh the stark differences in sound and appearance and does not create an overall commercial impression that is confusingly similar to GO GIRL. Thus, taking into consideration the vast differences in sound, appearance, and overall commercial impression, and the lack of equivalency in meaning, we find the marks to be dissimilar.

Judge Drost, in dissent, noted that under Palm Bay, the doctrine of foreign equivalents “should be applied only when it is likely that the ordinary American purchaser would stop and translate [the word] into its English equivalent.” He would find that ALLEZ FILLES is “the type of term that prospective purchasers would stop and translate.”

The line between foreign words that consumers would stop and translate is not always clear [you can say that again! - ed.], but, as a general guideline, it should be assumed that people familiar with a foreign language will translate the words in that language unless there is a specific reason for not translating the term, such as the term is the name of another noteworthy object or it has another recognized meaning in the language.

Here, noted Judge Drost, “the mark is composed of two simple French words. The first is the common French word that is a form of the verb 'Go' and the second is the French word for 'Girls,' which can have the same meaning in English.” He maintained that these terms would be understood not only by those who are fluent in French, but also by many with a brief exposure to French. Moreover, based on the significant evidence supporting the PTO’s position, he would find that “a non-de minimis number of purchasers would stop and translate the French terms ALLEZ FILLES into English.” In any case, he failed to see much difference in the meanings of the marks.

Judge Drost would resolve any doubt in favor of the prior registrant.

TTABlog comment: In a final comment, Judge Drost noted that “the result in this case, unless there is a successful opposition, is that the mark GO GIRL and the French words that the registration will translate as GO GIRLS will exist on the register for identical goods.” Should the panel have required that Applicant supply a new translation for ALLEZ FILLES!? Would it make any practical difference if the ALLEZ FILLES! registration issues with the translation “GO GIRLS”? If so, to whom?

If you were the Applicant and were asked to translate “allez filles,” what would you say? That it wouldn't be translated because it’s a grammatically incorrect phrase? Or would you just give the literal translation? If you did the latter, is that necessarily an admission that the doctrine of foreign equivalents should be applied?

Text Copyright John L. Welch 2009.

Sometimes Sunny San Francisco Snapshots

TTAB Affirms Two More Section 2(a) Scandalous Refusal

In the Board's latest Section 2(a) rulings, Applicant RK Netmedia failed in its attempt to register the marks CUMFIESTA and CUMGIRLS for "entertainment services in the nature of photographic images, pictures, video and audio recordings,and information regarding adult oriented subject matter transmitted through a global computer network." The Board concluded that the marks "would be offensive to a substantial composite of the general public and [are] therefore prohibited by Section 2." In re RK Netmedia, Inc., Serial Nos. 77060742 and 77060766 (May 21, 2009) [not precedential].


Marc Randazza (well-regarded First Amendment lawyer and blogmaster of The Legal Satyricon) argued on behalf of Applicant that the word "cum" is not scandalous "in the context of the marketplace as applied to only the goods or services in the application for registration."

The Board, however, took a different view of the precedents: "we hold that the determination of whether a term is scandalous or immoral is determined by the perceptions held by a substantial composite of the general public, not merely applicant’s customers or potential customers."

The language in the cases that the mark must be considered in the context of the marketplace as applied to only the goods or services in the application for registration means that the mark is not defined in a vacuum or in the abstract, but in connection with the goods or services at issue.

Turning to the issue of the perception of the word "cum," dictionary evidence and Internet excerpts convinced the Board that "cum" is a vulgar term.

The Board noted the testimony of Applicant's expert that the word is considered “polite, professional, and proper” but nonetheless "in other walks of life and in other contexts, a substantial composite of contemporary society finds the word 'cum' to be vulgar."

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

Text Copyright John L. Welch 2009.

Steve Baird Thinks the Washington Redskins Need a Re-Branding

Steve Baird knows a lot about the REDSKINS case. He filed the original petition for cancellation with the TTAB in 1992, and successfully convinced the Board in 1994 that the laches defense was inapplicable to a Section 2(a) disparagement claim. Steve provides some incisive commentary on this saga at the Duets Blog, in "Re-branding Madness in Washington" Overlooks Obvious: The Washington Redskins.


Steve points out that in 1994 the TTAB concluded that "there exists a broader interest -- an interest beyond the personal interest being asserted by the present petitioners -- in preventing a party from receiving the benefits of registration when a trial might show that [the team's] marks hold a substantial segment of the population up to public ridicule."

But he notes some goods news, despite the D.C. Circuit Court of Appeal's ruling on laches: "There is a brand new generation of Native American Petitioners, led by Amanda Blackhorse, to make sure that a brand new similar case is actually and finally decided on the merits."

In fact, doesn't this development demonstrate why the 1994 ruling that struck the team's laches (slept on rights) defense was correct in the first place? The fact that, as long as the offensive team name continues, there always will be new Native American Petitioners reaching the age of majority anxious to object shows that their cause of action is rooted in public policy, not some personal and individual right that might be waived by failing to act quickly enough.

But here's the key question. Steve asks: "Again, putting the legal issues aside, why doesn't the team do the right thing, as a responsible business, and hire a branding guru to engage in some serious and successful re-branding?"

I suspect Steve already knows the an$wer.

Text Copyright John L. Welch 2009

Some Sunny Seattle Snapshots

Yesterday afternoon turned out to be a beautiful, sunny 60 degrees. Here are a few photos that I snapped (the first five yesterday). One of the other three has been shamelessly altered via Photoshop.








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Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® Symbol

Faced with two Spanish-word marks, the Board declined to apply the doctrine of foreign equivalents, instead concluding that “where both marks are Spanish words we must consider the connotation of the marks to both non-Spanish-speaking consumers and to Spanish-speaking consumers.” It proceeded to sustain Brown Shoe’s Section 2(d) opposition to registration of the mark PALOMITA for “shirts, pants, shoes, and hats,” finding it likely to cause confusion with the mark PALOMA, registered in standard characters and in the design form shown here, for various clothing and footwear items. However, the Board dismissed Opposer’s claim that Applicant Robbins had fraudulently misused the ® registration symbol. Brown Shoe Company, Inc. v. Molly D. Robbins, 90 USPQ2d 1752 (TTAB 2009) [precedential].

Buster Brown
Likelihood of Confusion: The key issue under Section 2(d) was, of course, the similarity of the marks. The Board noted once again that when the involved goods are identical, a lesser degree of similarity is necessary between the marks to support a finding of likely confusion. It concluded that “the points of similarity outweigh the differences.”

Brown Shoe asserted that under the doctrine of foreign equivalents the marks words have similar meanings,: “dove” for PALOMA and “little dove” for PALOMITA. Robbins argued that the doctrine should not be applied, but if it is, then the words have different meanings: PALOMITA also means “checkmark” or “popcorn.”

The Board, however, decided that the circumstances do not warrant application of the doctrine. In English, the words have no meaning, but in light of the similarity in appearance and pronunciation they would likely be perceived as having similar meanings. To Spanish-speaking consumers, one meaning of PALOMITA is “little dove,” and these is nothing inherent in the goods to suggest that a consumer would choose “popcorn” or “checkmark” over that meaning. [Robbins asserted that in use, the “I” in PALOMITA is a checkmark, but the Board pointed out that this is irrelevant, since the applied-for mark is in standard character form.]

And so the Board concluded that the marks are confusingly similar, and it sustained Opposer’s 2(d) claim.

Fraudulent Misuse of the R: The Board began by observing that, with regard to improper use of the registration symbol, it is Office practice “to accept explanations that demonstrate that such use was inadvertent or without any intent to deceive or mislead and that there has been an effort to discontinue the offending use.”

Brown Shoe, however, asserted that Robbins’ admissions that she knew the mark was not registered in the U.S. are sufficient to support the fraudulent misuse claim. Because Robbins did make any evidence of record, Opposer urged, there is nothing of record to prove the existence of a Mexican registration [which Robbins claimed in her unsworn discovery responses] nor to establish that Mexican law permits the use of the ® symbol.

The Board, however, allowed Robbins to rely on her interrogatory responses indicating that she believed use of the symbol to be proper because she had registered the mark in Mexico. The Board distinguished the legal precedent cited by Brown Shoe and pointed out that Robbins ceased use of the symbol when she learned of the possible misuse as a result of Opposer’s fraud claim.

TTABlog comment: Once again we see how hard it is to make any hay out of someone’s improper use of the ® symbol. Here’s a practical question: since one may freely use TM or SM adjacent any supposed mark, and since the vast majority of consumers (I suspect) don't know the difference between TM, SM, and ® anyway, why make a federal case out of it unless you can really, really prove a bad intent?

Text Copyright John L. Welch 2009.

Back to the Board: Is "REDSKINS" Disparaging or Not?

How many news reports have you seen or read about the REDSKINS case that say the football team "gets to keep using its mark"? Or doesn't "lose its mark"? Or some such nonsense. Of course, a TTAB cancellation proceeding was at the heart of the case, and the issue decided was registration of the marks, not use. [For a quick review of the Harjo rulings, see the recent TTABlog posting here].


The district court, in Harjo I, reversed the TTAB's finding of disparagement, ruling that it was not supported by substantial evidence. The court alternatively reversed on the ground of laches. The subsequent district court and appellate court rulings dealt only with the laches issue, ultimately resulting in a ruling in favor of Pro-Football, Inc.

But there is a "new" petition for cancellation filed in 2006 by six "new" Native American petitioners, seeking to knock out the same six REDSKINS registrations on the ground of disparagement under Section 2(a). Blackhorse v. Pro Football, Inc., Cancellation No. 92046185. The petition alleges that "each of the Petitioners ... [has] only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run."

Amanda Blackhorse
That Blackhorse proceeding has been suspended pending resolution of the Harjo case. When it resumes, there apparently will be no laches problem and the issue of disparagement will be back before the Board. These Petitioners will have the opportunity to create a new factual record, guided by the Harjo I ruling.

The Harjo rulings should have no res judicata effect on the new cancellation proceeding, since the new petitioners were not parties to the prior proceedings. The public perception of the REDSKINS name may well have changed over the past decade. The results of the various controversies over college nicknames suggests that the evidentiary record in Blackhorse may be quite different from that in Harjo. And then the courts will undoubtedly have their say.

In any case, the registration issue isn't over yet. Whether the Redskins continue to use the mark is a whole different ball game.

Text Copyright John L. Welch 2009.

Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order

WYHDTP? If you were a TTAB judge, would you have deemed this precedential? The Board entered judgment against Applicant/Respondent Donnell Mitchell in view of his failure to comply with a Board Order compelling discovery. MySpace, Inc. v. Donnell Mitchell, 91 USPQ2d 1060 (TTAB 2009) [precedential].

[D]efendant's only response to plaintiff's renewed request for the sanction of judgment is a statement that he had complied or tried to comply with the Board's order. However, that response is belied by the fact that the only thing defendant has done is to re-send his own discovery requests and to continue personal attacks on plaintiff's counsel. In view of our previous warning that we would enter judgment unless he complied with our order and his continued blatant non-compliance, the sanction of entry of judgment is now warranted.

TTABlog note: For a more interesting angle on this strange story, see this posting at the Las Vegas Trademark Attorney blog.

Text Copyright John L. Welch 2009.

TTAB Resolves Santana's Ownership Dispute, But Pamela Chestek is Dissatisfied

Pamela Chestek likes nothing more than a tangled trademark ownership dispute, particularly when it's an inter-family brouhaha, but she did not appreciate the TTAB's decision in Arturo Santana Gallego v. Santana's Grill, Inc., Cancellation Nos. 92043152, 92043160, and 92043175 (May 6, 2009) [not precedential]. She comments at length at her Property, Intangible blog (here).


Says Ms. Chestek:

Sometimes the TTAB is an alternative reality. *** The TTAB reached a conclusion that may be right, but in a way that is so doctrinally irrelevant that we can't know.

***By ignoring the true relationship of the parties and pretending that this is simply about two marks adopted separately, we wind up with dodgy reasoning inconsistent with the rest of trademark law.

That should grab your attention.

Text Copyright John L. Welch 2009.

Three "Meet The Blogger V" Photos Released

Congratulations to Jeremy Craft and John Egbert, of the Egbert Law Offices, Houston, Texas. They have have attended all five "Meet the Bloggers," and promise to appear at next year's MTB VI in Boston, after they have their heads examined.


How many of these Bloggers can you identify?


Schwimmer, Welch, and Randazza take a break from the keyboard:

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Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too

Confirming that an applicant’s ownership of a family of marks cannot overcome a Section 2(d) likelihood of confusion refusal, the Board upheld the PTO’s rejection of the mark CYNERGY for "medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment, sold directly to licensed medical practitioners." Despite the sophistication of the relevant purchasers, the Board found the mark likely to cause confusion with the registered mark SYNERGIE PEEL for “medical devices used for microdermabrasion” [PEEL disclaimed]. In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009) [precedential].


The marks: The Board had little difficulty in concluding that the marks are similar: they begin with words that are phonetic equivalents; the word SYNERGIE is the dominant portion of the cited mark; and both marks connote “synergy.”

Applicant argued that familiarity with its corporate name and its two registered marks, CYNOSURE and CYNOSURESPA, would cause consumers to pronounce the subject mark with a long “I”, whereas the cited mark would have a short “I” sound. [Any proof of this? -ed.] The Board, however, pointed out that the focus of its 2(d) analysis must be on the mark sought to be registered, not on other marks of applicant. “In other words, a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.”

The Goods: Examining Attorney Barbara A. Gaynor maintained that the involved goods both perform cosmetic procedures: e.g., they remove dead skin cells. The evidence showed that the goods are used for overlapping purposes and are purchased by the same entities for use in the same facilities. Applicant did not directly dispute that conclusion.

Instead, Applicant pointed to the specified, restricted channels of trade for its goods, relying “most emphatically” on the sophistication of the purchasers of its goods. Its lasers cost in the $90,000 to $170,000 range and are sold through a direct sales force that assists purchasers with installation and training. The goods of the cited registration fall in the $8,000 to $15,000 range, and users must be trained and certified.

Nonetheless, the Board concluded that “the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances in this case.” As the Board has previously stated, “Even technically trained purchasers who are extremely familiar with expensive machinery may be confused when similar marks are used with respect to the same goods.”

And so the Board affirmed the refusal to register.

TTABlog comment: I’ve always thought that the “sophistication of purchasers” factor was a make-weight that was seldom outcome determinative. [See, for example, Section 5 of this old article.] One may always argue that a person who is sophisticated in one field of endeavor is not necessarily “sophisticated” when it comes to trademarks. What, I wonder, would happen to that argument in a case involving, say, two software products sold under similar marks to trademark professionals?

As to Applicant’s argument about pronunciation of the marks, I was surprised that the Board didn’t pull out the old adage that “there is no correct pronunciation of a trademark.” [Really? What about APPLE?] Nor did the Board point out that, since Applicant’s mark and the cited mark both connote “synergy,” they would both be pronounced like “synergy.”

Text Copyright John L. Welch 2009.

"Meet the Bloggers V" Tonight 6-9 PM in Seattle!

The 5th annual non-INTA event called "Meet the Bloggers" will take place tonight at the offices of Graham & Dunn in Seattle. Details (here).

Seattle welcomes the BLOGGERS(Click on photo for larger picture)

Schwimmer and Welch preside over Meet the Bloggers ISan Diego, May 2005(Click on photo for larger picture)

D.C. Circuit Affirms Laches Ruling Dismissing "REDSKINS" Cancellation

On May 15, 2009, the U.S. Court of Appeals for the District of Columbia Circuit affirmed the ruling of the U.S. District Court for the District of Columbia that laches barred the attempt of Native American Mateo Romero to cancel six registrations for the mark REDSKINS (or variations thereof) owned by the Washington Redskins for football entertainment services. Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009).

Mateo Romero
This long-running battle began in 1992, when seven Native Americans filed a petition for cancellation with the TTAB, asserting that the REDSKINS marks are disparaging under Section 2(a) of the Trademark Act. The Board granted the petition in 1999 in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999), finding that the marks "may be disparaging of Native Americans to a substantial composite of this group of people,” and “may bring Native Americans into contempt or disrepute" in violation of Section 2(a). [In 1994, the Board had tossed out Pro-Football's laches defense in a pre-trial order.]

Harjo I: The U.S. District Court for the District of Columbia, in an appeal from the TTAB by way of civil action under Section 1071(b)(1) of the Trademark Act, granted summary judgment reversing the Board's decision. Pro-Football, Inc. v. Harjo, 68 USPQ2d 1225 (D.D.C. 2003). The district court ruled that the TTAB should have found the Native Americans' petition for cancellation barred by laches, and that in any case the TTAB's decision was unsupported by substantial evidence.

Harjo II: In a ruling issued on July 15, 2005, the U.S. Court of Appeals for the District of Columbia Circuit remanded the case to the district court for further consideration of the issue of laches with regard to one of the petitioners, Mateo Romero. Pro-Football, Inc. v. Harjo, 75 USPQ2d 1525 (Fed. Cir. 2005).

The court of appeals agreed with the Native Americans that the district court had improperly applied the doctrine of laches to Romero, who was only one-year old in 1967 when the district court started the clock for laches (when the first of the REDSKINS marks was registered).

The court explained that laches is an equitable doctrine "founded on the notion that equity aids the vigilant and not those who slumber on their rights." It ruled that, as to Romero, the district court's approach ran afoul of the "well-established principle of equity that laches runs only from the time a party has reached his majority." [The district court had improperly assessed laches as to all the Native Americans beginning in 1967, the time of the first mark’s registration.] While retaining jurisdiction of the case, the appellate court sent the case back to the district court to evaluate whether laches bars Romero's claim.

Harjo III: On remand, the district court was directed to evaluate "Romero's laches," and particularly the "trial and economic prejudice" to Pro-Football that would have been avoided "had the petitioner acted more diligently in seeking cancellation."

On June 25, 2008, the district court issued its decision on remand, concluding that Romero's claim was barred by laches. Pro-Football, Inc. v. Harjo, 87 USPQ2d 1891 (D.D.C. 2008). It found that Romero waited almost eight years after reaching the age of majority in 1984 before petitioning to cancel the six registrations, a delay that was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case. It further found that the "Romero delay period" resulted in "both trial prejudice and economic prejudice to Pro-Football, such that it would be inequitable to allow Defendant Romero to proceed with his cancellation petition." The district court therefore granted Pro-Football’s renewed summary judgment motion on its laches defense.

Harjo IV: In its latest ruling, the court of appeals confined its review to the sole question that Romero raised: whether the district court properly found trial and economic prejudice sufficient to support a defense of laches. The appellate court found no abuse of discretion in the district court's ruling, and so it affirmed.

The laches ruling applied even to the mark "Redskinettes," which was first registered in 1990, only two years before the petition for cancellation was filed. The district court found even this short period of delay unreasonable, "given the relationship between the Redskinettes claim and the other claims on which Romero was already delaying."

Amanda Blackhorse
TTABlog note: Meanwhile, on August 11, 2006, six new Native American petitioners filed a petition for cancellation of the same six REDSKINS registrations. Blackhorse v. Pro Football, Inc., Cancellation No. 92046185. The petition alleges that "each of the Petitioners ... [has] only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run."

Text Copyright John L. Welch 2009.

TTAB Affirms PTO's Latest Section 2(a) Scandalous Refusal

In a 27-page decision, the Board affirmed a Section 2(a) refusal to register the mark PUSSY NATURAL ENERGY in the design form shown immediately below for various beverages, including energy drinks, finding the mark to be scandalous. The Board concluded that the mark "is offensive when viewed in the context of the goods identified in the application from the standpoint of a substantial composite of the general public according to contemporary attitudes." In re Shearer, Serial No. 78690531 (May 14, 2009) [not precedential].


Applicant argued that the word "pussy" has multiple meanings, that nothing in the mark or in the packaging for the product suggests a vulgar meaning, and that the PTO did not establish how the mark would be perceived as scandalous in the marketplace.


The Board, however, found that the PTO's evidence confirmed that "the attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceive in this context." Noting the highly competitive nature of the energy drink marketplace, the Board observed:

In this context, it is not reasonable to conclude that the relevant public will perceive PUSSY as referring to a cat, a weak or cowardly man or boy, a catkin of the pussy willow or a pussy wound. The offensive, vulgar meaning is the only one which makes sense in this context.

In sum, the Board concluded that, "in the view of a substantial composite of the public, in particular women, the term PUSSY currently has a vulgar, offensive sexual meaning and ... the offensive meaning is the meaning which the relevant public will perceive as applied to the beverage products identified in the application, including energy drinks."

And so the Board affirmed the refusal to register.

TTABlog comment: I have provided only a brief summary of the decision, which deserves a full reading.

Would the Applicant have had a better chance at registration if his design mark had included a drawing of a kitten?

Text Copyright John L. Welch 2009.

TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential

In a rather significant development in the TTAB's fraud jurisprudence, the Board has re-designated as precedential its decision in Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758 (TTAB 2008). The Board's Order (here), dated May 13, 2009, includes a copy of the October 23, 2008 ruling now marked with the indication "THIS DECISION IS A PRECEDENT OF THE T.T.A.B."


As discussed in an April 20, 2009, TTABlog posting here, in Zanella the Board adopted the approach of the panel majority in University Games in ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud."

Text Copyright John L. Welch 2009.

Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"

Reversing a Section 2(d) refusal, the Board found the mark REVIVE WITH 'THI' for "medicated lotions for hand, body and foot" not likely to cause confusion with the registered mark THI² and the mark THI in the Stylized form shown to the right, for "adhesives for affixing false eyelashes; cosmetics; false eyelashes." The PTO failed to provide any evidence that the involved goods are related, and the Board was unable to draw "any such conclusion based only on the language of the respective identifications of goods." In re Daniel T. Phuoc, Serial No. 77356068 (April 29, 2009) [not precedential].



Applicant Phuoc contended that the phrase "revive with ..." sufficiently distinguishes the marks, asserting that "revive" is emphasized because it is the first word in his mark and because it "suggests that the product heals and restores something that is damaged, unlike the impression of the registered mark." Phuoc also maintained that REVIVE WITH THI "has a rhyming quality" which "gives a separate impression apart from the two individual words," and that the rhyming quality "adds a certain phonetic distinction that THI alone does not."

The Board, however, disagreed. It pointed out that the phrase "revive with ..." pertains directly to the word THI, suggesting that THI will "restore" the skin or emotional state of the user of the product. Thus THI "is the focus of applicant's mark." The Board rejected the notion that there is any rhyme or rhythm to Phuoc's mark that consumers will recognize.

Applicant’s mark is likely to be perceived as a derivative of, or somehow related to, the registered mark THI, if used in connection with related or similar goods or services. While the marks are different in sound and appearance due to the addition of the phrase “revive with …” in applicant’s mark, we find that the connotations and commercial impressions of the respective marks are substantially similar and, thus, the marks in their entireties are substantially similar.

As to the goods, however, Phuoc had better luck. The PTO submitted a definition of "cosmetics" as "substances put on the face or body that are intended to improve its appearance or quality," arguing that the involved goods all fall within that definition and therefore are related. In support of that proposition, the PTO submitted ten third-party registrations allegedly for "cosmetic-type goods and medicated lotions."

Not so fast, said the Board. It agreed with Phuoc that the PTO's definition of cosmetics was "extremely broad," and it took judicial notice of another definition of "cosmetic" as "of, relating to, or making for beauty esp. of the complexion: beautifying."

In other words, "cosmetics" are, in everyday parlance, "make-up," and are usually applied to the face. Clearly, the "false eyelashes" identified in the cited registrations are "cosmetics." However, we do not agree that applicant’s medicated lotion is likely to be considered a "cosmetic."

The Board noted that the PTO's third-party registrations separately identify "medicated lotions/skin care products" and "cosmetics." Moreover, even if medicated lotion were a cosmetics, there is no per se rule that all cosmetics are related.

The third party registrations were not probative because they "do not include both medicated lotions and either cosmetics, false eyelashes or adhesives for such."

In short, the Board found the record "entirely devoid" of evidence that the involved goods are related, and so the Board reversed the refusal.

TTABlog comment: I wonder if there is any such thing as a "medicated eyelash lotion" on the market? Seriously, though, are there not medicated beauty products? Are beauty and medication mutually exclusive? I guess these are moot points, because even if there are such products, the PTO did not get them into the record.

Text Copyright John L. Welch 2009.

Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods

One should expect a Section 2(e)(1) descriptiveness refusal if one uses the applied-for mark in one's identification of goods, shouldn't one? Applicant epcSolutions, Inc. found out the answer to that question in In re epcSolutions, Inc., Serial No. 76675389 (May 1, 2009) [not precedential]. Applicant subsequently amended its i.d., but the damage had been done. That misstep, along with other evidence, led the Board to affirm a mere descriptiveness refusal of ASSET OVER INTERNET PROTOCOL for "computer network systems comprised of computer hardware and software for creating radio frequency identification tags for assets and tracking those same assets in transit" [INTERNET PROTOCOL disclaimed].


The Board first found that "asset" merely describes a significant feature and purpose of Applicant's goods: hardware and software that track a company's physical assets. The Board pointed to Applicant's original identification of goods for confirmation: "an asset over Internet protocol network for work in process, fixed assets, finished goods assets and human assets, tagged with RFID tags." And its final i.d. of goods also refers to assets: "...for assets and tracking those same assets in transit."

Moreover, the record included third-party descriptive use of "assets" and "asset tracking software" in connection with the tracking of assets via RFID.

As is often the case in Section 2(e)(1) appeals, the appellant made a hopeless argument about other meanings for all or part of the mark in question. Here, Applicant feebly urged that "asset" is not descriptive because it could refer to "essentially anything of value, such as jewelry, one's home, or one's education." Of course, that ignores the basic legal requirement that a mark be considered in the context of the goods at issue, not in the abstract.

The Board concluded that "asset" is merely descriptive of Applicant's goods, despite the omission of the word "tracking" from the mark.

As to OVER INTERNET PROTOCOL, that too merely describes the goods because they employ an "over Internet Protocol" in performing their function. The record established that "when specific applications utilize an Internet Protocol, they are commonly identified by combining a descriptor of the application with the words 'over Internet Protocol.'" Moreover, in its brief, Applicant acknowledged the mere descriptiveness of "over Internet Protocol." [E.g., VOIP].

Finally, the Board ruled that the combination of ASSET with OVER INTERNET PROTOCOL is also merely descriptive of the goods: it directly describes the key feature of the goods, namely, tracking assets via an over Internet Protocol.

Applicant didn't give up yet. It argued that, although asset tracking is known via RFID, and although over Internet Protocol is a known technology, the two have never before been combined and therefore the relevant consumers would have no basis for understanding ASSET OVER INTERNET PROTOCOL with regard to these novel goods. Again, the Board was unimpressed. The mark must be considered in the context of the goods at issue, not in the abstract. And it does not matter for mere descriptiveness purposes whether Applicant was the first or only user of the phrase. And in any case, the evidence showed that combining RFD asset tracking with the Internet is "not as usual or unexpected as applicant claims."

Finally, the Board pointed to Applicant's original identification of goods, which "used the term 'asset over internet protocol' in a merely descriptive manner, and indeed in a generic manner, to identify its goods."

We find that applicant's own use of "asset over internet protocol" in this manner belies its claim that the mark is not merely descriptive.

For all these reasons, the Board affirmed the refusal under Section 2(e)(1).

TTABlog comment: WYHA?

Text Copyright John L. Welch 2009.

TTABlog Challenge: Test Your TTAB Judgeability

Here's another chance to evaluate your potential as a TTAB judge. Let's see if that legal sheepskin on your wall was worth the cost of framing it. We have another Section 2(d) likelihood of confusion case for consideration. The Opposer alleges ownership and prior use of the mark LAMB'S for rum and has submitted registrations for the mark LAMB'S NAVY RUM and for the two design or stylized marks shown below. The Applicants seeks to register LAM for rum. You already know how this comes out, don't you? Ok, how many pages will it take you to run through the du Pont factors and reach your conclusion? I doubt you were as efficient as the Board in Corby Distilleries Limited v. Augusto Ramon Lopez, Eva Maria Lopez and Maximo Ignacio Lopez, Opposition No. 91180144 (April 30, 2009) [not precedential].


In a mere eight pages (quite short for a 2(d) ruling), the Board not surprisingly sustained this opposition. The only real issue was the similarity of the marks, and on that point the Board reasoned as follows:

The terms LAMB’S and LAM are phonetically similar. They are also visually similar because they both begin with the letters L-A-M. There is little, if any, trademark significance in the apostrophe letter "s" in opposer's mark. See Winn's Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140 (TTAB 1979) ("little if any trademark significance can be attributed to the apostrophe and the letter 's' in opposer’s mark" WINN'S when compared to applicant's mark WIN-WAY). See also Calvin Klein Industries Inc. v. Calvins Pharmaceuticals Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (the addition of the letter "s" at the end of applicant's mark CALVINS does little distinguish it from opposer's mark CALVIN); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (McKENZIE’S and McKENZIE are nearly identical). When used in connection with rum, LAMB'S (or LAMB) and LAM are equally arbitrary, and thus they engender the same commercial impression. Accordingly, we find that the marks are similar in appearance, sound, meaning and commercial impression.

Balancing the du Pont factors , the Board found confusion likely between Applicants' mark LAM and the registered marks LAMB'S (Stylized) and LAMB'S NAVY RUM, and so it sustained the opposition.


TTABlog comment: How, pray tell, did the LAM application get by the Examining Attorney?

TTABlog nitpick: Opposer claimed common law rights in the word mark LAMB'S, and the Board compared Applicant's mark with that word mark LAMB'S, not with LAMB'S in Stylized form or with LAMB'S NAVY RUM. Not that it made much difference. But in its ultimate finding of likely confusion, the Board pointed only to those two registered marks and did not say that the word marks LAMB'S and LAM are confusingly similar. Now that surely didn't make any difference in the outcome, but the package could have been more neatly wrapped, don't you think?

TTABlog BTW: What is "navy rum," you might ask? According to CocktailDB, the Internet Cocktail Data Base, it is: "Generic for a type of London dock rum; Jamaican rum aged either on sailing ships or in warehouses along the banks of the Thames River in London, England. Several brands, notably Lamb's Navy Rum. Often bottled with a relatively high proof."

Text Copyright John L. Welch 2009.

TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?

After you read this decision ask yourself the question: Would You Have Appealed? Applicant Siemens sought to register the mark SILICON ULTRASOUND for "ultrasound devices, namely, medical ultrasound apparatus, ultrasound transducers made out of silicon wafer." Examining Attorney David Yontef deemed the mark merely descriptive under Section 2(e)(1). The Board found his conclusion ultra sound. In re Siemens Medical Solutions USA, Inc., Serial No. 78974960 (April 24, 2009) [not precedential].


The record revealed that ultrasound equipment can be made using silicon, that Siemens' goods employ silicon, that silicon is not an "incidental component" of Siemens' goods, and indeed that "silicon in ultrasound transducers is central to a new generation of ultrasonic imaging technology."

Siemens lamely asserted that SILICON ULTRASOUND is at most suggestive of its goods. It urged that "without additional wording[,] applicant's mark cannot be understood." Of course, that argument misses a significant point: a mark must be considered not in the abstract but in the context of the goods at issue.

Moreover, the Board observed, purchasers of Siemens' goods will be doctors and specialists who would make the selection after careful investigation into the features and suitability of the product. The Board had no doubt that purchasers "would be aware of (or quickly learn) the significance of the mark as applied to the identified goods."

Siemens then feebly contended that the mark is not descriptive because it literally means "a non[-]metallic sound wave used in medical exams." The Board found that interpretation "absurd." For one thing, sound waves are not generally considered to be metallic or non-metallic. Purchasers would understand the word "silicon" to refer to a component of the apparatus, and that is, in fact, the way the term is used in the evidence of record.

Finally, Siemens tossed up another softball, asserting that "third parties are not using and do not need to use the mark." The Board whacked that one of the park: a mark may be deemed descriptive even if applicant is the first, and only, user. Here, silicon ultrasound technology appears to be a recent development, and so it is not significant that the term is not widely used.

And so, the Board affirmed the refusal to register.

silicon rod
TTABlog comment: Well, would you have appealed? I can think of one attorney who probably would have: his initials are M.A.

I suspect that, had the Examining Attorney found a few more uses of the phrase SILICON ULTRASOUND, we might have seen a genericness refusal.

Text Copyright John L. Welch 2009.

TTABlog Comment: Fraud and the Digital Camera

Since its seminal decision in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), the TTAB has been slowly developing its fraud jurisprudence, adding a new snapshot to the album every year or so. That is not meant to be a criticism of the Board. That's just the way decisional law works: case by case. It's like taking a photograph in the old days: a lot of time spent in the dark, waiting for the film to develop. Recent Board cases have focused on the issue of how and when a false statement regarding use may be cured; as a result practitioners are scurrying to conduct "fraudits" to ferret out potential problems in their clients' trademark portfolios. The purpose of this essay, however, is to look at the problem from a different point of view and ask how the false verification of use may be avoided in the first place.


In last year's precedential decision in University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008), the panel majority held that correction of a false statement prior to publication of an application gave rise to a rebuttable presumption that the applicant lacked the intent to commit fraud on the PTO. Judge Walsh, in his concurring opinion, went farther: he opined that such a correction removed the fraud altogether, because the false statement was no longer material to the approval of the application by the Examining Attorney.

Last fall, in a nonprecedential decision, Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008), another Board panel ruled that correction of a false statement after registration but before challenge creates a rebuttable presumption that the registrant "did not intend to deceive the Office." The Board had previously suggested this same approach in dictum in Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d 1090 (TTAB 2007) [precedential].

And so, more than five years after Medinol, the case law has developed to a point where we can see a picture of the TTAB's view of fraud and how to cure it: an amendment to correct a false statement filed before the application or registration has been challenged gives rise to a rebuttable presumption that the owner lacked the requisite intent to commit fraud on the PTO. Judge Walsh would take this a step farther, saying that, prior to approval for publication, the correction wipes out any materiality and therefore eliminates the possibility of fraud altogether.

But what about the supposed "solemnity" of the verification? If false declarations of use may be cured later, unless an adversary is able to uncover a "smoking gun," why worry about the correctness of the original declaration? Why bother to make the effort to ensure that the mark has indeed been used with all the goods and services? [One might even ask, why require the verification at all?]

Perhaps more practically, how can the PTO increase the likelihood that the original declaration will be correct?

One way might be to impose a "correction fee" on an applicant or registrant who deletes goods or services. That might have some deterrent effect depending on the size of the fee, but it is unlikely that anything but a large fee would have an appreciable effect, and it seems doubtful that a large "correction fee" would be palatable to the trademark community.

But how about this idea: require the applicant (and the registrant submitting a Section 8 Declaration) to submit a specimen of use for each and every good or service identified in the application (or registration)? Would that be so onerous in this day and age, when virtually everyone has a digital camera? Most trademark and service mark applications are filed electronically: in FY 2008 the figure was 96.9%. How difficult would it be for an applicant to provide a digital image for each product showing the mark on the product itself, or on packaging or a hangtag, or on a promotional piece for each service, etc.?

From the Examining Attorney's point-of-view, perusing a series of digital images would not seem to be an overwhelming chore. Unlike the old days, the PTO would not have to store physical samples. [The new rule might be relaxed a bit to allow an applicant to submit a catalog as a specimen of use for goods, provided that at least one specimen shows the mark on one of the products in the catalog and the mark in question appears on the catalog cover.]

Under this proposed new specimen-of-use rule, false verifications would be less frequent. Applicants and their counsel would have to take their time in considering the identification of goods or recitation of services. Foreign registrants submitting their Section 8 Declarations would be forced to comprehend that in this country continued registration requires actual use of the mark on all the goods and services in the registration.

Would this new approach result in the return of that old bugaboo, "token use"? Possibly in some cases, but it seems more likely that with the new focus on specimens for each good and service, trademark practitioners, applicants, and registrants will be more interactively involved in confirming that the verification of use is complete and correct.

Not only would this approach decrease the number of false verifications, but in cases where the verification is still false, the fraud would be well defined and seldom defensible. In this author's opinion, part of the dissatisfaction with the Board's fraud doctrine stems from the use of the term "fraud" in the first place. The pejorative connotation of the term "fraud" raised the hackles of many, particularly when the false statement may have resulted from mere carelessness or innocent misunderstanding. With the new rule in place, there would be much less room for carping over the "fraud" label.

In sum, now that there seems to be a light at the end of the fraud tunnel for trademark owners and practitioners (hopefully, it is not an oncoming train), this writer believes that our critical lens should now be turned to the verification of use, and particularly how to preserve its meaning and solemnity. Perhaps the digital camera will help us see the way.

TTABlog postcript: A loyal reader suggests that I have been too easy on the Board in this comment, and that the common law of fraud has in fact been well developed for decades. I don 't disagree that the Board got off on the wrong foot in Medinol when it first set off down the strict liability path and applied the "fraud" label. The Board has been slowly charting a new course out of that quagmire. The purpose of this essay, however, was not to bash the Board, but to consider the other end of the problem: the false declaration and how to avoid it.

Text Copyright John L. Welch 2009.

Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses

Like a squirrel finding a long misplaced nut, the USPQ in its latest weekly update has unearthed a precedential decision from September 2007 involving an unsuccessful attempt by a cancellation respondent to supplement its discovery responses after petitioner's testimony period had closed. The Board struck the tardy evidence and then granted the petition for cancellation of a registration for the mark KRAZY KORN for "toasted corn product for snack purposes" on the ground of abandonment. Quality Candy Shoppes/Buddy Squirrel of Wisconsin, Inc. v. Grande Foods, Cancellation No. 92044407 (September 5, 2007) [precedential].


Motion to Strike: Petitioner Buddy Squirrel moved to strike three of Respondent Grande's exhibits submitted with its notice of reliance. The Board had deferred consideration of the motion until final decision. The three exhibits comprised certain sales documents provided in lieu of interrogatory answers, and supplemental responses to Squirrel's interrogatories and admission requests. These documents were produced more than one month after Squirrel's testimony period had closed, and a mere four days before Respondent took its own testimony. Grande claimed that it needed to "clarify" the use of the mark by its distributor.

Squirrel contended that Respondent failed to justify its failure to supplement earlier, citing Fed. R. Civ. P. 37(c) and 26(e)(2), and it noted that Grande made no claim that new information was discovered. Instead, Grande claimed that it "changed its interpretation of petitioner's requests."

In addition, Grande cited Rule 2.120(j)(5), contending that submission of these supplemental responses was necessary because Squirrel had submitted at trial fewer than all of respondent's discovery responses and it was therefore necessary to submit additional responses for "fairness and completeness."

The Board embraced Buddy Squirrel's position, saying to Respondent, in effect, "are you nuts?" The responses that Respondent contends were "omitted" by Squirrel "were not even provided to petitioner until after petitioner's testimony period closed." Moreover, a party must respond completely to discovery and must supplement its responses as soon as it becomes aware of new information. Fed. R. Civ. P. 26(e).

As to Respondent's "misunderstanding" of the discovery requests, the Board found that assertion "specious." In any case, the supplemental responses were untimely and Respondent gave no "viable" reason for its delay.

And so the Board struck the three exhibits, and furthermore struck the testimony of Respondent's witnesses that pertained to facts disclosed only in the stricken exhibits.


Abandonment: In its original responses to Squirrel's discovery demands, Grande admitted that "it did not sell any toasted corn products for snack purposes in interstate commerce in connection with the trademark KRAZY KORN in any of the years 2000 through 2004." That established Squirrel's prima facie case of abandonment. Respondent had no evidence in the record as to its intent to resume use, and therefore it failed to rebut Squirrel's case.

Consequently, the Board found the mark to be abandoned, and it granted the petition for cancellation.

Tip from the TTABlog: Don't squirrel away your evidence, buddy, or you may wind up like Veruca Salt!


TTABlog Trademark Drivel: Frankly, I think this case could have remained buried with little or no harm to our grasp of TTAB jurisprudence.

BTW: as to the identification of goods in the now-deceased registration, wouldn't "toasted corn snack" have been more aptly succinct?

Text Copyright John L. Welch 2009.

New TTABlog Trademark Jobs Posting: Former Examining Attorney/Law Firm Associate Seeks San Francisco or Washington, DC Position

Former Examining Attorney with large law firm experience (6 years total) seeks law firm or in-house position in San Francisco or the Washington DC-area. Very knowledgeable in mark clearance, trademark prosecution, TTAB opposition/cancellation proceedings, and dealing with foreign associates. References available. Send inquiries to John L. Welch to arrange for an introduction.
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CAFC Hears Oral Argument in Bose Fraud Appeal

Oral argument (slow-loading .mp3 here) was held before the CAFC yesterday, May 6th, in Bose Corp. v. Hexawave, Inc., Appeal No. 2008-1448. The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007) [not precedential], found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players. [TTABlogged here and here].


Bose acknowledged that it stopped manufacturing and selling audio tape recorders and players in 1996-97. Nonetheless, it did not delete those goods from the WAVE registration when filing for renewal. Bose contended that the renewal was proper "because owners of audio tape recorders and players continue to send their previously purchased goods to opposer for repair services and upon completion of the repair services opposer 'transports' them back to the owner." The Board found that, "inasmuch as opposer was not using the mark in connection with audio tape recorders and players, the statement in the Section 8/9 renewal was false" and "not reasonable."

Interestingly (at least to me), the argument begins with a quotation from my December 2008 Allen's Trademark Digest article (here) at page 8, questioning the Board's ruling in Bose:

The Board’s ruling on the fraud issue seems particularly precarious. There may have been no case law that supported Bose’s position on the use issue, but there did not seem to be any case law directly to the contrary. So one must ask whether the Board went a bit overboard in finding Bose’s position so unreasonable as to be fraudulent?

After listening to the oral argument, I think the CAFC is going to agree with me.

Text Copyright John L. Welch 2009.

TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)

I gave up golf years ago out of frustration: I simply could not get through the windmill! That's when I turned to patent law for excitement. The Board took up both patent law and golf in a somewhat frustrating decision affirming a Section 2(e)(5) refusal to register the product configuration mark shown below for "golf clubs," finding the design to be functional. Relying mainly on several utility patents owned by Applicant Karsten, the Board ruled that the design of the putter head "increases the moment of inertia of the putter head, thereby rendering the design functional." In re Karsten Manufacturing Corporation, Serial No. 77170356 (April 15, 2009) [not precedential].


The Board applied the standard functionality analysis set forth by the CCPA in In re Morton-Norwich Products, Inc., 213 USPQ 9 (CCPA 1982). It first considered the utility patents owned by Karsten, since

[a] prior patent ... has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device. TrafFix Devices Inc. V. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005 (2001).

Karsten did not dispute that its patent claims "recite features of the configuration for which registration is sought," but it argued that the particular shape of its putter head was arbitrary:

[T]he arms of applicant’s golf club head are functional because they have mass and are located away from the club face for increased perimeter weighting (MOI), but the recurved shape, taper and step in the arms is arbitrary. Likewise the through-holes of applicant’s golf club head are functional because they have no mass and therefore allow the mass that would have been present to be redistributed to other parts of the club head for increased perimeter weighting. The through-holes are, however, arbitrarily shaped, and therefore non-functional for the purpose of trademark registration.

Karsten contended out that "nothing in the patent suggests that the arms must be curved just so or that the through-holes must be a particular size or shape to accomplish the claimed improvement."

The Board, however, sweepingly asserted that the utility patent claims cover "the very same functional features of the new putter head that, as set forth in the description, comprise the applied for mark." [That's debatable - ed.]


The Board also relied on third-party advertisements regarding MOI [Moment of Inertia] putters, but Karsten contended that those advertisements contain only "generalized statements concerning the geometric shape and the perimeter weighting" that are "descriptive of the function on any MOI putter."

Karsten provided 18 alternative designs for MOI putters, but the Board tossed them aside: "Although this evidence shows a variety of designs that are specifically different, all are similar in design and involve the same utilitarian features: perimeter weighting accomplished by through-holes to increase moment of inertia." Moreover, according to the Board, "the number of alternatives is relatively limited." [Not a very compelling argument by the Board, I think. The alternative designs may perform the same function, but that's a different question than whether the designs are functional in a trademark sense - ed.]

And so, the Board concluded that Karsten's design is functional under Section 2(e)(5) and hence unregistrable as a trademark.

three alternative designs

TTABlog comment: I initially found the Board's decision unconvincing, and was prepared to bloviate about de facto versus de jure functionality: i.e., just because the claims of a utility patent cover (or "read on") a product does not mean that every different design or configuration of the product is functional for trademark purposes.

Then I looked at Karsten's U.S. Patent 7,052,411, entitled "Golf Putter Head With A Visual Alignment Aid And An Increased Moment of Inertia." Claim 13 of the patent is of particular interest [emphasis and numerals added]:

• A golf putter head comprising:
• a face member [12] having a heel end [14], a toe end [16], and a front surface [18] arranged for impacting a golf ball;
• a first arm [32]extending substantially rearwardly from the heel end of said face member;
  
• a second arm [34] extending substantially rearwardly from the toe end of said face member;
• a central member extending rearwardly from said face member intermediate the heel and toe ends thereof, said central member including first and second wings [38, 40] connected to said first and second arms, respectively, rearwardly of said face member;
• said central member [36] and said first arm defining a first opening therebetween adjacent the heel end of said face member;
• said central member, and said second arm defining a second opening therebetween adjacent the toe end of said face member;
• said first and second arms each having an outer generally convex edge and an inner generally concave edge;
• said first and second wings each having an outer generally concave edge;
• the outer generally convex edge of said first arm [32] merging with the outer generally concave edge of said first wing [38] and forming a first outwardly projecting portion located rearwardly of the heel end of said first face member;
• the outer generally convex edge of said second arm [35] merging with the outer generally concave edge of said second wing [40] and forming a second outwardly projecting portion located rearwardly of the toe end of said first face member;
• the inner generally concave edges of said first and second arms defining portions of said first and second openings.

In short, the language of claim 13 defines to a significant extent the shape of Karsten's putter head, including the concave/convex shape of the outer edges and the shape of at least a large part of the through-holes. The applied-for design incorporates those shapes. So I changed my mind and concluded that the Board reached the right result after all. Do you agree?


TTABlog sidebar: By the way, I'm working on a patent application on my new invention: a method for stroking a stationary round object with the flat face of a hand-held implement to cause said object to roll unobstructedly through an opening periodically blocked by rotating obstacles, comprising (1) measuring the distance between said sitting round object and said opening; (2) dividing said distance by the speed of the round object when stroked to determine the amount of time the object will travel before reaching the opening; (3) measuring the amount of time that elapses between a first rotating obstacle blocking the opening and the next rotating obstacle blocking the opening; and (4) determining from said times an appropriate moment to stroke the round object so that it reaches the opening when an obstacle is not blocking the opening. [I'm still refining the language of step 4 but I wonder, am I just tilting at a windmill?]

Text Copyright John L. Welch 2009.

Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers

In an enervating, albeit precedential, decision, the Board affirmed the PTO's refusal to register the mark WAVE for "recreational vehicles, namely travel trailers and fifth wheel trailers," finding it likely to cause confusion with the registered mark THE WAVE for "trailers, dump trailers, and truck bodies." Applicant Thor Tech argued that, in context, the term "trailers" in registrant's identification of goods must be read to mean "industrial and commercial trailers sold to professional purchasers," but the Board refusing to read any such limitation into the registration. In re Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) [precedential].


Of course, the Board found the marks to be "virtually identical," and it observed for the umpteen hundredth time that as a result a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion.

Thor Tech argued that the goods at issue are different because its application is directed to recreational vehicles whereas the registered mark concerns commercial and industrial trailers sold to professional purchasers.

Applicant asserts that “[t]he term ‘trailers’ in the cited registration should be read in pari materia with the associated goods listed in the registration.” In essence, applicant is arguing that we should interpret the registrant’s description of goods to read as follows: "industrial and commercial trailers sold to professional purchasers, dump trailers and truck bodies."

The Board pointed out for the billionth time that the likelihood of confusion determination is to be made based upon the goods as identified in the involved application and registration, "regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." [In other words, this ain't the real world, buddy, this is the PTO - ed.] Therefore, the Board was constrained to construe registrant's "trailers" as encompassing travel trailers and fifth wheel trailers.


fifth wheel trailer
As to Thor Tech's pari materia argument, the Board noted that Thor Tech had failed to cite any precedent supporting its contention that "trailers" must be construed in the context of the other listed goods. Moreover, "it is acceptable and appropriate for an applicant to use a broad description of goods." And so the Board deemed the term "trailer" in the registration to encompass the terms "travel trailers and fifth wheel trailers" in the application.

The Board therefore found that confusion is likely and it sustained the refusal to register.

TTABlog note: The Board pointed out in footnote 11 that Thor Tech has a potential remedy for its problem: seek partial cancellation under Section 18.

TTABlog postscript: Loyal reader T.O. suggests that I point out that the same Applicant was involved in another precedential decision in 2007 (TTABlogged here), in which the Board reversed a refusal to register the mark CHATEAU RESORT for "park trailers," ruling that the the term "park trailers" is sufficiently definite to satisfy Lanham Act Section 1(b)(2). So be careful when you refer to the "Thor Tech" identification-of-goods case.

Text Copyright John L. Welch 2009.

TTABlogger and Jeremy Phillips on IP Think Tank Podcast

Jeremy Phillips of IPKat and yours truly shared the microphone on an IP Think Tank podcast (here) last week, mainly discussing the issues of bona fide intent and fraud and how they may impact foreign trademark owners.


On the issue of "curing" fraud, I stated that once a registration has issued, it may be too late to cure the fraud. However, a nonprecedential decision last fall (TTABlogged here) holds out the possibility of cure even after registration (but before the registration has been challenged).
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"BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat

Although the Board found the BIG O TIRES mark to be inherently distinctive and strong for vehicle tires and related services, and indeed possessed of "niche market fame" in the Midwest and west of the Mississippi, it dismissed an opposition to the mark BIGG WHEELS for "wheels for automobiles" [WHEELS disclaimed]. The Board found the applied-for mark not likely to cause confusion or to dilute Opposer's mark in light of the dissimilarities between the marks. Big O Tires, LLC v. Wheel Specialties, LTD., Opposition No. 91163791 (April 3, 2009) [not precedential].


Big O pleaded ownership of 15 registered mark in its notice of opposition, but the Board limited its analysis to just the closest one: BIG O TIRES for tires, retail tire store services, and related goods and services. Based on Opposer's use of the BIG O TIRES mark for more than 40 years, its "impressive" sales figures and its "substantial" advertising expenditures, its widespread promotion and the media recognition of the mark, the Board found that the mark "has achieved regional fame for purposes of our likelihood of confusion analysis." This "niche market fame" led the Board to find that the BIG O TIRES mark is "strong and entitled to a broad scope of protection."

As to the involved goods and services, the board found Applicant's wheels to be "closely related to opposer's tires and retail store service featuring, among other vehicle parts and accessories, tires."

Turning to the marks, however, the Board found them different in appearance, sound, and connotation.

The word "big" is defined, inter alia, as "large or great in dimensions, bulk, or extent; also large or great in quantity, number, or amount … [and] outstandingly worthy or able." Merriam Webster Online Dictionary, 2009. There is nothing in the record to suggest any particular meaning of opposer's mark in the context of tires. The only meaning we can attribute to opposer's mark is a large letter "O." On the other hand, the term "BIG(G)" in applicant's marks evokes an image of dimensionally large and outstandingly worthy wheels, a must have for any auto enthusiast. It is this play of the word "big(g)" on the term "wheels" that creates a meaning and connotation in applicant's mark that is distinct from that of opposer’s BIG O TIRES mark.

In short, the Board found that the dissimilarities in the marks "outweigh all other relevant du Pont factors."

With regard to Opposer's other BIG O marks, they create essentially the same commercial impression as the BIG O TIRES mark, and therefore the same analysis applies. As to its BIG FOOT marks, "there are differences in connotation between those marks and applicant's mark that obviate any similarities."

The Big O
The Board then gave short shrift to Big O's dilution claim, pointing out that a dilution claimant must prove more than confusing similarity between the marks at issue: "it must show that the marks are 'identical or very substantially similar.'" Here, the Board found that the marks at issue are not confusingly similar, and so they obviously do not meet the higher dilution standard. The Board therefore declined to consider the other elements of a dilution claim, including "whether opposer's niche fame suffices for establishing dilution."

TTABlog comment: When the dilution statute was revised in 2006, niche market fame was no longer sufficient to qualify a mark for dilution protection. So says dilution expert Scot Duvall in his article, "The Trademark Dilution Revision Act of 2006: Balanced Protection for Famous Brands" 97 Trademark Reporter, 1252, 1261 (November-December 2007). But would the revised statute apply in this opposition, which was commenced in 2005 and involves a mark that was in use since 2004?

Text Copyright John L. Welch 2009.

New TTABlog Trademark Jobs Posting: Former Examining Attorney Seeks DC/Baltimore Area Position

Former PTO Examining Attorney and fifth-year down-sized associate at DC-area law firm seeks law firm or corporate position in the Baltimore-Washington area. Highly experienced in trademark clearance, registration, and enforcement, with a focus on brand selection and management, and in litigation before the Trademark Trial and Appeal Board. She has managed global trademark portfolios in fields ranging from fashion to the tool and die industry, and also has advised clients on copyright and licensing issues. Send inquiries to John L. Welch to arrange for an introduction.
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TTAB Posts May 2009 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six hearings for the month of May, 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.


May 5, 2009 - 2 PM: In re Kathy Sayah, Serial No. 76486273 [Refusal to register the design shown below for "advertising agency namely, promoting the services of the travel, entertainment, and restaurant industry through the distribution of printed promotional materials, rendering sales promotion advice, and dissemination of advertising matter” and for "printing services," on the ground that the design is not being used by Applicant as a service mark.]


May 12, 2009 - 10 AM: In re Arai Helmet Americas, Inc., Serial No. 78689888 [Section 2(d) refusal to register mark PROFILE for "motorcycle helmets and auto racing helmets sold by motorcycle or auto racing retailers" in view of the identical mark registered for "helmets for the sports of hockey and ringette"].


May 12, 2009 - 2 PM: In re AAMCO Transmissions, Inc, Serial No. 78965665 [Appeal from requirement that Applicant disclaim the phrase "COMPLETE CAR CARE EXPERTS" in the mark AAMCO COMPLETE CAR EXPERTS & Design for "maintenance and repair services for motor vehicles, motor vehicle parts and motor vehicle accessories"].


May 12, 2009 - 2:30 PM: In re Nittany Corporation, Serial No. 76584265 [Section 2(d) refusal to register the mark GOLDEN GOURMET SNACKS for "fried pork rinds" and "corn chips and tortilla chips" in view of the registered mark GOLDEN GOURMET "confectionery treats, namely sweetened popcorn, nuts and pretzels"].


May 21, 2009 - 10 AM: In re Sharp Kabushiki Kaisha, Serial Nos. 76679900 and 76679907 [Refusals to register KAMEYAMA in English and in Chinese characters for "Optical disc recorders, optical disc players, LCD television receivers; television receivers; LCD television receivers with personal computer terminal; LCD monitors; combined LCD Television/monitor and DVD players; audio speakers, audio amplifiers, stereo tuners, DVD recorders, and DVD players" on the ground that the mark is primarily geographically descriptive under Section 2(e)(2)].


May 26, 2009 - 2 PM: Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 [Section 2(d) opposition to registration of the mark MTOWN CLOTHING & Design for various clothing items, based upon Opposer's mark MOTOWN registered for entertainment services and used for a variety of goods and services, including clothing].


Text Copyright John L. Welch 2009.