The TTABlog<sup>®</sup>: January 2010

Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use

The United States Senate yesterday passed a bill (here) introduced by Vermont Senator Patrick Leahy to amend the Trademark Act in order to fix an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection).

In contrast to Section 8 of the Act, Section 71 currently does not provide any grace period for the sixth-year Section 71 declaration of use. And as to the 10-year declarations of use, Section 71 requires that they be filed within the six-month period before the 10th anniversary, or within a three-month grace period thereafter.

This new bill will amend Section 71 to provide the same filing periods and grace periods as does Section 8: one year before the anniversary date or within six months thereafter.

Note that, although the Madrid provisions came into effect in the U.S. in November 2004, the first U.S. Extension of Protection under the Madrid Protocol provisions was issued on February 1, 2005 [See TTABlog posting here]. Therefore, under current law, the first Section 71 Declaration of Use for a Madrid-based U.S. Extension of Protection will be due no earlier than February 1, 2010, and could be filed as late as February 1, 2011. Presumably Section 71 will be amended before then, and a six-month grace period will apply.

Text Copyright John L. Welch 2010.

Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal

Twenty-five third-party registrations for marks containing the word "UNITED" for financial services convinced the Board that UNITED is a weak formative, leading to a reversal of a Section 2(d) refusal of the mark shown below for money-transfer services. The Board found Applicant's mark not confusingly similar to the registered mark UNITED for the same services. In re Unidos Financial Services, Inc., Serial No. 77126814 (January 27, 2009) [not precedential].

In light of the identity of the involved services and the lack of any limitations in the registration and application, the Board assumed that the services are offered in all normal channels of trade to the usual classes of purchasers, namely the general public, who will exhibit "all levels of sophistication and care."

As to the marks, Applicant provided a translation of its mark as "UNITED WITHIN YOUR REACH." The Examining Attorney maintained that the doctrine of foreign equivalents applies because Spanish is the second most common language in the USA [What's the first? - ed.] and she contended that the ordinary American purchaser familiar with Spanish will stop and translate UNIDOS into UNITED.

The Board not surprisingly found that an appreciable number of U.S. consumers speak or understand both English and Spanish [I speak English but don't understand it; as to Spanish, nada - ed.], and that the doctrine of foreign equivalents is applicable.

I seems likely that, in connection with money-transfer services, this appreciable number of English/Spanish bi-lingual U.S. consumers will translate applicant's Spanish-language mark into English.There is nothing in this record that indicates the contrary.

Turning to the strength of the term UNIDOS/UNITED in connection with money-transfer services, Applicant submitted 25 third-party registrations for marks containing the word UNITED for services in the financial field. This evidence suggested "that UNITED is one of those ubiquitous terms, like ACME, used in many trademarks in the financial services field, and more specifically, in connection with money transfer and related services." [I never heard of ACME Bank - ed.]

The Board then found that the additional wording and the design elements in Applicant's mark "are both significant aspects of the overall commercial impression of the mark." In view of the weakness of the mark UNITED, it concluded that the marks at issue here are "more dissimilar than similar."

And so it reversed the refusal to register.

TTABlog comment: What if the Board were faced with just the word UNIDOS in the form and color displayed above? Would that stylized, single-word mark be confusingly similar to the registered UNITED mark, both for money-transfer services?

Funny you should ask. That was the very issue raised in the appeal of Applicant's co-pending application Serial No. 77042799, scheduled for oral argument on January 28, 2010 (yesterday). However, after the Board's decision came down in this case on January 27th, the Examining Attorney withdrew the refusal to register in the UNIDOS case. Hmmm. Seems like she had a shot at winning that one.

Text Copyright John L. Welch 2010.

Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related

In this Section 2(d) Board game, the TTAB found the mark COMMANDER-IN-CHIEF for "equipment sold as a unit for playing board games" likely to cause confusion with the nearly identical mark COMMANDER IN CHIEF for playing cards. Applicant's arguments that Registrant sells its goods to tourists in Washington, DC and other touristy areas and that Registrant may no longer be using its mark were simply irrelevant to the Board's determination. In re Paul D. Miller, Serial No. 77332676 (January 27, 2010) [not precedential].

Not surprisingly, the Board found the involved marks to be "substantially identical," a fact that weighed heavily against Applicant. Moreover, when marks are substantially identical, a lesser degree of closeness between the goods is necessary to support a finding of likely confusion.

Applicant's references to how Registrant uses its mark and whether it has abandoned its mark for playing cards were trumped by black letter law: the issue of likelihood of confusion must be determined in light of the goods as identified in the involved application and registration, not on the basis of what the extrinsic evidence shows.

Applicant argued that Examining Attorney Jennifer Vasquez had misinterpreted the term "playing cards" because, when the term stands alone, it means a "standard pack of fifty-two playing cards." But the Examining Attorney demonstrated that "traditional board games come with a variety of types of game cards, many of which are referred to as 'playing cards.'" And in some board games, a traditional fifty-two card deck is a critical component. Moreover, some manufacturers and merchants sell standard decks in close proximity to board games. The Board therefore concluded that the goods are related for Section 2(d) purposes.

Since there are no limitations as to channels of trade in the application or registration, the Board presumed that they travel in the normal channels for such goods. Finally, the goods are not particularly expensive, and so potential buyers will not be "especially thoughtful" in purchasing them.

Balancing the du Pont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog comment: Since Registrant has purportedly stopped using the mark for playing cards, perhaps Applicant should have considered Section 18 of the Trademark Act, which permits partial cancellation or restriction of a registration. Sometimes a letter to the Registrant bringing up the subject of partial cancellation or restriction may yield a consent to register, and both parties can go on their merry way, thereby avoiding the TTAB poker game.

Text Copyright John L. Welch 2010.

Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?

In its fraud analysis in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), the CAFC relied on various precedents involving inequitable conduct in the patent arena. As Joe Dreitler has pointed out (for example, here), trademark fraud and patent inequitable conduct are completely different beasts, and they should be treated differently. But the CAFC, relying on its patent rulings, has now completely knocked the props out from under the TTAB's fraud jurisprudence, and it may take some time to build it up again.

Generally speaking, a patent is a government grant of an exclusive right, for a limited time, to make, use, and sell a particular invention. If a patent is held unenforceable due to inequitable conduct, the patentee is left with nothing. Therefore the CAFC maintains a very high standard of proof for inequitable conduct:

The need to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context is paramount because the penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim clearly meets every requirement of patentability. Star Scientific, Inc. v R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008).

The patent doctrine of inequitable conduct requires clear and convincing proof of both the materiality of the misrepresentation and the intent to deceive the USPTO. "Information is material when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Id. at 1367. Information concealed from the UPSTO may be material even if it does not invalidate the patent. Ibid.

Determining materiality in the patent context is not easy: Should some piece of information have been disclosed to the PTO? Is a certain prior art reference merely cumulative? What exactly does it disclose? Would it affect examination of the application? This determination is hardly a black-and-white decision, and there is much room for disagreement.

In short, the CAFC requires clear and convincing proof of inequitable conduct in patent cases because of the severity of the penalty and the uncertainty surrounding the materiality issue.

This contrasts sharply with the trademark side of the coin. In the typical trademark fraud case, there is no issue of materiality because a false statement regarding use is clearly material to the examination of the application or Section 8 Declaration: the application would not be approved for publication, or the declaration accepted, if the PTO knew the truth. Moreover, it is usually a simple question with a black or white answer: either the mark was in use for a particular good or service, or it wasn't.

Furthermore, as Mr. Dreitler points out, the consequence of a finding of trademark fraud is not nearly as severe as in the patent context. A trademark applicant or registrant found to have committed fraud will lose its application or registration (and the appurtenant priority thereof), but its common law rights will remain intact. Unlike the patentee, it hasn't lost everything.

Given the lesser severity of the punishment for trademark fraud and the relatively simple and straightforward determination of materiality, why should such a high standard of proof for fraud be imported from the patent context? Yet that's what the CAFC did in Bose, relying on Star Scientific at the core of its ruling.

In my blog posting on Monday (here), I discussed the possibility that "reckless disregard for the truth" might satisfy the intent requirement for fraud in the trademark context. The TTAB recently suggested the same in DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (January 14, 2010). The CAFC in Bose specifically declined to rule on that question (footnote 2), but it also gave an indication that reckless disregard might not be enough:

We [have] even held that “a finding that particular conduct amounts to ‘gross negligence’ does not of itself justify an inference of intent to deceive.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 867 (Fed. Cir. 1988) (en banc). The principle that the standard for finding intent to deceive is stricter than the standard for negligence or gross negligence, even though announced in patent inequitable conduct cases, applies with equal force to trademark fraud cases. After all, an allegation of fraud in a trademark case, as in any other case, should not be taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir. 1959)). Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

There is no dispute that an allegation of trademark fraud "should not be taken lightly." But does that preclude a lesser standard of proof for fraud in trademark cases, where the consequences are less severe than in a patent case and where the materiality is unquestionable? The verification of an application or a declaration of use is not to be taken lightly either.

In its criticism of Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), the CAFC stated that the TTAB had "lowered the fraud standard to a simple negligence standard." Has the CAFC left the door open for "reckless disregard" as a basis for trademark fraud? Is the TTAB ready to take a step through that door? We shall see.

TTABlog afterthought: Can you think of a reason why the patent operation and the trademark operation are in the same agency, other than due to historical accident? I've been a registered patent attorney since 1975, and have practiced patent law and trademark law throughout my career, and I can't think of one. If patents and trademarks were each handled by separate agencies, would the CAFC so readily apply patent fraud principles to a trademark case? I doubt it.

Text Copyright John L. Welch 2010.

TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese

In a "somewhat close" but nonetheless dull case, the Board gave the benefit of the doubt to the Registrant in sustaining a Section 2(d) opposition to registration of the mark CATELLI for "pasta sauces," finding it likely to cause confusion with the registered mark LOCATELLI for "cheese." Gennaro Auricchio S.p.A. v. Trademark Management Company, Opposition No. 91161200 (January 22, 2010) [not precedential].

As to the marks, the Board found them "more similar than dissimilar." Although there are readily discernible differences between the marks [Can you identify them? - ed.], "to the extent they may well be seen as Italian surnames, [they] will leave prospective consumers with similar connotations."

Of course, the goods need not be identical or even competitive in order to support a finding of likely confusion. Opposer introduced a number of third-party registrations that cover both cheese and pasta sauce, and it pointed to various websites where cheese and pasta sauces appear -- and even pasta sauce containing cheese!

Opposer also showed that "cups of its hard, grated cheese are often sold in supermarkets on stand-alone displays , or 'shippers,' placed in the produce section, in store aisles with dry pasta and pasta sauces, and/or in the deli area."

And so the Board found the goods to be related for Section 2(d) purposes.

Because neither the registration nor the opposed application includes any limitation as to channels of trade, it must be assumed that the goods travel in the normal channels therefor, which channels would clearly overlap. Similarly, Registrant's "cheese" must be assumed to include inexpensive goods purchased "without much care." [I.e., I don't care what type of cheese you got, just give me some cheese, will you?]

Opposer then hit Applicant with the strength of its mark. The long and successful history (since 1984) of US sales of LOCATELLI brand cheese (three million pounds (by weight) in 2007), convinced the Board that LOCATELLI has achieved "a notable degree of renown in the field, and this factor weighs in opposer's favor."

Applicant pointed to the fact that Opposer had agreed to limit its use of the LOCATELLI mark to pecorino cheese and had granted Nestle a license to use the mark for other cheeses. However, Nestle "no longer maintains any rights in this mark," and so the Board found this situation distinguishable from those in which "multiple third parties using similar marks may have the impact of weakening or boxing-in a potential plaintiff." In short, Opposer has "a fairly significant right to exclude third-parties from the use and registration of the LOCATELLI mark for cheese and related food items."

And so the Board sustained the opposition.

TTABlog comment: It's a close call, but I think I agree with the Board.

Text copyright John L. Welch 2010.

Thinking About Fraud: Where Does "Inadvertence" End and "Reckless Disregard" Begin?

Countless articles, seminars, webinars, and postings have informed us that in In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009), the CAFC rejected the "knew or should have known" standard for fraud set out by the TTAB in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003). The CAFC ruled that the Board, "[b]y equating 'should have known' with a subjective intent," had "erroneously lowered the fraud standard to a simple negligence standard." But what if the Medinol case were to come down the pike today? Applying Bose, was it fraud when Neuro Vasx filed its Statement of Use and "overlooked" one of two items in the identification of goods?

In Bose, the CAFC held that "a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO."

"There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive."

The facts in Bose fell under the "honest misunderstanding" umbrella. Do the Medinol facts qualify for the "inadvertence" shield? Let's explore.

Honest Misunderstanding: Bose's General Counsel, Mark Sullivan, signed a Section 8 Declaration in 2001 verifying that the mark WAVE was still in use for audio recorders. Sullivan explained that in his belief, Bose's repairing of the damaged, previously-sold WAVE audio tape recorders and players and returning the repaired goods to the customers met the "use in commerce" requirement for the renewal of the trademark.

It turned out that Sullivan's statement was legally incorrect -- returning repaired goods does not constitute "use" of the mark -- but prior to 2001, neither the PTO nor any court had interpreted "use in commerce" to exclude the repairing and shipping of repaired goods.

Sullivan testified under oath that he believed the statement was true at the time he signed the renewal application. Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.

The CAFC found "no substantial evidence that Bose intended to deceive the PTO in the renewal process," and it therefore reversed the TTAB's fraud ruling.

"Subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the analysis. Of course, 'because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence. But such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.'" [citation omitted].

So Bose had an explanation for the false statement of use. The law was unclear, and Sullivan could honestly believe that the WAVE mark was still in "use" for audio recorders. [The TTAB had questioned whether this belief was reasonable, but the CAFC stated that reasonableness "is not part of the analysis." That seems a bit strange to me, since an honest, totally off-the-wall, belief would hardly seem a legitimate explanation that would avoid fraud.]

We have seen at least one other fraud case in which the declarant was absolved of fraud because of an honest (reasonable) belief in the truth of the statement made: Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899 (TTAB 2006) ["It was not unreasonable for Ms. Kern, as a layperson, to believe that the ... activities constituted use of the MAID TO ORDER mark in interstate commerce."] But a claimed failure to understand basic trademark law does not excuse fraud. See, e.g. Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) [Board rejected Australian Applicants' claim of misunderstanding as to the requirements of Section 1(a)]; Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) [Board rejected claim of Canadian registrant that it did not understand the term "use in commerce"].

In short, if a party is going to rely on the "honest misunderstanding" excuse to avoid fraud, it had better have a good explanation. Unfamiliarity with basic trademark law will not do the trick.

stent (Medinaol, not Neuro Vasx)

Inadvertence: In Medinol, Registrant Neuro Vasx verified in its Statement of Use that its mark NEUROVASX had been in use for "medical devices, namely, neurological stents and catheters." After Medinol's petition for cancellation was filed alleging that the SOU was fraudulent, Neuro Vasx admitted in its answer that it had not used the mark for stents. It moved to amend the registration to delete "stents," claiming that the word had been "overlooked" when the SOU form was completed. The Board denied the motion to amend and instead entered summary judgment sua sponte against Neuro Vasx on the ground of fraud. Although it accepted the "overlooked" statement, the Board still found fraud under the now-defunct "knew or should have known standard."

Suppose the TTAB were deciding Medinol today? Would Neuro Vasx's alibi qualify as "inadvertence" under Bose? Is that all a declarant has to do to avoid a fraud ruling: claim the error was overlooked? Suppose an applicant or registrant "overlooked" not one of two items, but two out of four? 10 out of 20? 50 out of 100?

Just what "sins of overlooking" does the inadvertence shield cover? Is it more likely excusable to overlook one item out of 50 than one item out of two? Does it matter whether the overlooked item is closely related to the other(s): for example, overlooking "v-necked t-shirts" in a list of 100 clothing items may be more readily excusable than overlooking "nuclear power plants" in an identification that lists only "chewing gum and nuclear power plants."

Since it is highly unlikely that any applicant or registrant will admit that it intended to deceive the USPTO, maybe the question should be posed this way: When does failure to pay attention turn into "reckless disregard for the truth," and thus fraud? The CAFC in Bose declined to reach the issue of whether recklessness constitutes fraud. But the Board's recent precedential decision in DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation, Cancellation No. 92045099 (January 14, 2010) suggests that "reckless disregard" may suffice. There, in denying Daimler Chrysler's motion for summary judgment based on alleged fraud, the Board pointed out that Petitioner DC offered no direct evidence regarding AMC's intent to deceive the PTO, nor

"any indirect or circumstantial evidence which would lead us to the inevitable conclusion (which on summary judgment means the absence of any genuine issue of material fact) that respondent had the intent to deceive the office, or at least had a reckless disregard for the truth)." [emphasis supplied].

Other thoughts: As noted, one is not likely to obtain an admission that the declarant intended to deceive the USPTO, and so fraud will have to be proved by circumstantial evidence. Presumably, most applicants or registrants will claim either an honest misunderstanding of the law or inadvertence. Those who seek to establish a fraud defense will need to explore both aspects through discovery.

As we have seen, in some cases there may be legitimate doubt on the part of the declarant regarding whether there was "use" under the Lanham Act, and so the "honest misunderstanding" prong of Bose will apply. But in most cases the "honest misunderstanding" excuse will probably not be available because it will be clear (typically after discovery) that the mark had simply not been used with some of the identified goods or services.

In those many cases, the declarant will likely claim that the false statement resulted from "inadvertence" of some sort. But one suspects that, as a practical matter, the higher the ratio of "overlooked" goods or services to the total identified, the less the "inadvertence" excuse will be asserted. At some point the declarant will recognize that "indavertence" won't work, and that it will have to try some other explanation.

A declarant might claim (in desperation) that he or she failed to read the document that was verified, but that would certainly seem to fall within the "reckless disregard for the truth" category. Wouldn't that, shouldn't that, be fraud? If it isn't, then let's not bother with verification anymore.

Or suppose the declarant read the statement and assumed it was correct, but did nothing to investigate the truth of the statement? Medinol and its progeny stress that statements made with "such degree of solemnity" should be thoroughly investigated prior to signature." Is that a "reckless disregard" amounting to fraud?

If reckless disregard does support a fraud claim, one is left to wonder where "inadvertence" leaves off and "reckless disregard" begins. On which side of the line would Medinol fall? The answer to that question may tell us a lot about the viability of the fraud defense in TTAB proceedings.

The DaimlerChryler case provides welcome guidance on how to plead a fraud claim. Now we need the Board to populate the landscape with cases finding fraud so that we can draw the new fraud roadmap.

Text Copyright John L. Welch 2010.

Boston Bar Association: "Let's Talk TTAB: Fraud, Intent-to-Use, and Other Hot Topics"

On Wednesday, January 27th, yours truly will lead a discussion of recent TTAB developments at a lunchtime meeting of the Boston Bar Association's International Intellectual Property Law Committee. The title: "Let's Talk TTAB: Fraud, Intent-to-Use, and Other Hot Topics." Time: 12 noon. Place: Boston Bar Association, 16 Beacon Street, Boston. Sign up here.

WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products

The Board not surprisingly affirmed a Section 2(e)(4) refusal to register the mark WEIS in the design form shown below, for frozen dairy products. More than four thousand household listings for "Weis," coupled with the fame (believe it or not) of recently deposed Notre Dame football coach Charlie Weis, convinced the Board that Weis is not a rare surname. Rumbling through the Benthin factors, the Board found that Examining Attorney Daniel S. Brody had made a prima facie case under 2(e)(4), which Applicant failed to rebut. In re Weis Australia Pty Ltd, Serial No. 79047172 (January 20, 2010) [not precedential].

The Board repeated its usual mantra that "there is no minimum number of listings needed to prove that a mark is primarily merely a surname." Here, the number of residential listings were enough to sway the Board that Weis "is not an especially rare surname."

Citing In re Gregory, the Board noted that "large numbers of individuals in the United States would be exposed to the name of the Notre Dame head football coach in sports programming and news." [Not any more - ed.] In short, according to the Board, "WEIS is not rare [how about medium rare? - ed.] when viewed as a name repeated in the media in terms of public recognition." [For my criticism of Gregory see part IV of this article - ed.].

Charlie Weis
No one associated with Applicant Weis has the surname Weis. [Really? Where did the name come from, I wonder - ed.]. As to other recognized meanings, the Examining Attorney submitted negative dictionary evidence [I always think of "negative dictionary evidence" as white print on black pages - ed.] showing no entries for "Weis."

Applicant contended that WEIS has other recognized meanings because "it is used as an acronym in different contexts." Citing something called the Acronym Attic, it provided several examples, and it also pointed to a radio station called "WEIS 990 AM radio" (the voice of Cherokee County, Alabama).

The Board noted that six of the seven acronym listings were "unverified," and it was not clear that the seventh ["World Event Interaction Survey"] is "well recognized to potential consumers of applicant's goods." It was simply not persuaded that "WEIS primarily will be viewed or understood by purchasers as an acronym or radio station call letters rather than for its surname significance"

Turning to the fourth factor, the Board, with another nod to Charlie Weis, found that WEIS has the look and feel of a surname.

Finally, the design portion of the subject mark is "certainly not fancy, and unlike in In re Benthin, supra [highly stylized oval design], the carrier or background design is not so unusual or distinctive to create a non-surname significance."

And so the Board affirmed the refusal.

TTABlog comment: Well, would you have appealed?

BTW, when I hear the name "Weis," I think of former White Sox second baseman Al Weis, who later achieved some glory with the 1969 World Series Champion New York Mets.

Text Copyright John L. Welch 2010.

TTAB Enters Summary Judgment: "RED KAP" and "RED SNAP" for Clothing Too Dissimilar for Confusion or Dilution

The Board needed only ten pages to grant Respondent's summary judgment motion, ruling that Respondent's mark RED SNAP for various clothing items is not confusingly similar to, nor likely to dilute, the registered mark RED KAP for clothing. Imagewear Apparel Corp. v. Wings Manufacturing Corporation, Cancellation No. 92045101 (January 15, 2010) [not precedential].

Petitioner Imagewear Apparel asserted that RED is "highly distinctive if not arbitrary in connection with clothing." Respondent disagreed, submitting evidence of many third-party uses of RED in connection with clothing. [The Board gave no weight to third-party registrations because of lack of evidence of actual use of the marks therein]. The Board found the term RED to be a weak formative in the clothing field.

Based on the existence of these third-party marketplace uses of the term RED in connection with clothing, we cannot find that petitioner’s marks are entitled to an elevated scope of protection.

The Board then rejected Petitioner's claim that its mark is famous, noting its "relatively small advertising expenditures and the limited number of unsolicited articles (most of which are in specialized trade publications) concerning petitioner's RED KAP mark." Finding no genuine issue that the term RED is weak and the mark RED KAP is not famous, and "given that the marks are so dissimilar," the Board entered summary judgment on the Section 2(d) claim.

... the term KAP and its phonetic equivalent “cap” have entirely dissimilar meanings to that of the word SNAP; and viewing the marks overall as we must, we find the marks to be so dissimilar that as a matter of law there is no genuine issue of material fact that RED KAP and RED SNAP are not confusingly similar and that respondent is entitled to entry of summary judgment in its favor.

Turning to dilution, the Board pointed out that the marks at issue must be "substantially similar" to support a dilution claim. [If Petitioner's mark were diluted, would it become PINK KAP? -ed.] Here, since the marks are not sufficient similar for purposes of Section 2(d), they perforce are not substantially similar for dilution purposes. And so the Board entered summary judgment in favor of Respondent on this claim as well.

Text Copyright John L. Welch 2010.

TTAB Issues New Order in Oldest Pending TTAB Case

Well, this is quite a coincidence! This morning I posted a brief note about the oldest pending TTAB case: United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. Counsel for the parties had just reported to the Board that the related, pending civil action "has not been dismissed."

Apparently the Board may be ready to move this case along, after a nearly 25-year suspension hiatus. Today, the Interlocutory Attorney issued an Order (here) yesterday requiring the parties to submit additional information about the status of the matter:

... the parties are allowed thirty days from the mailing date of this order to file with the Board a response, co-signed by both parties or their counsel of record, which includes:

1) a detailed summary of the current court activity;

2) a statement of the current status of the civil action, including whether said action is presently "administratively closed;"

3) a copy of the court's two most recent orders;

4) in the event that the parties have not been engaged in efforts to settle during the past twelve months, a statement indicating this, and an explanation thereof; and/or

5) in the event that the parties have been engaged in efforts to settle during the past twelve months, a detailed summary of such efforts, listing dates on which the parties have met or corresponded, the existence and status of any outstanding settlement proposals, and a list of issues that have been resolved and those that remain for trial.

Gee, I hope the parties still have the original files, or at least carbon copies thereof.

Text Copyright John L. Welch 2010.

Oldest Pending TTAB Case Continues in Suspension

The oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, is about to reach its 25th year of suspension. The proceeding was commenced on September 9, 1982, and has been suspended since May 10, 1984. We have plenty of time to pick out an anniversary gift.

The reason for the suspension is the pendency of a civil action in the United States District Court for the District of Maryland. According to a paper filed by the parties in 2002, the lawsuit was administratively closed by the court (at some earlier time) "to give the parties the opportunity to resolve their differences."

The most recent TTAB paper filed by the parties (January 19, 2010) states:

the civil action in the United States District Court for the District of Maryland has not been dismissed."

Well, that is true. I suppose that's enough for the TTAB to put this case back on the shelf for another year.

Text Copyright John L. Welch 2009-10.

CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas

In a non-precedential ruling, the CAFC affirmed the TTAB's decision in University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential]. [TTABlogged here]. At the Board level, the Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos. The Board had also dismissed South Carolina's Section 2(a) counterclaim for lack of standing. The University of South Carolina v. University of Southern California, Appeal No. 2009-1064 (Fed. Cir. January 19, 2010) [not precedential].

South Carolina logo
Carolina sought registration of the logo mark shown above for "clothing, namely, hats, baseball uniforms, T-shirts, and shorts." California relied on two registrations, one for the standard-character SC mark for various goods, including clothing, and the other for the logo shown on the left immediately below for various goods, also including clothing. It also relied on common law rights in the logo shown on the right immediately below.

Section 2(d) Opposition: South Carolina attempted to limit Southern Cal's channels of trade to "university controlled" outlets, but the court agreed with the TTAB that the term "university authorized" was broader and encompassed the same trade channels as those for South Carolina's goods.

As to the sophistication of purchasers, the court agreed with South Carolina that evidence was lacking for the Board's findings regarding sophistication of purchasers, but it ruled that this error was harmless, since the marks are "legally identical and would appear on the same classes of goods in the same channels of trade."

And the court agreed with the Board that the lack of actual confusion was insignificant in light of the lack of evidence that "the two marks appeared together for a significant length of time."

Section 2(a) counterclaim: [The Board had separately granted summary judgment dismissing this counterclaim in 2003]. The court found that South Carolina had standing to bring this counterclaim, which was based on an alleged false association with the State of South Carolina. However, in light of the evidence that other colleges and universities represent themselves as "SC," it agreed that South Carolina had failed to present a genuine issue of material fact regarding whether the initials "SC" uniquely point to the State of South Carolina.

TTABlog comment: An mp3 of the oral argument may be found here.

Text Copyright John L. Welch 2010.

Precedential No. 2: TTAB Okays Fraud Pleading But Denies Summary Judgment on Intent Issue

In this second precedential ruling of 2010, the Board provides some needed guidance on how to construct a well-pleaded fraud claim. Although Petitioner DaimlerChrysler's pleading (filed pre-Bose) was not perfect, it was good enough to clear the FRCP 9(b) hurdle. But the Board denied DC's motion for summary judgment because DC failed to establish the absence of a genuine issue of material fact as to Respondent AMC’s intent to deceive. DaimlerChrysler Corporation and Chrysler, LLC v. American Motors Corporation, 94 USPQ2d 1086 (TTAB 2010) [precedential].

The pleading: DC sought to cancel AMC's registration for the mark AMC & Design for "automobile and structural parts thereof" on several grounds, including fraud. DC's amended petition for cancellation (filed on June 5, 2009) alleged the following:

21. On October 31, 2004, Registrant submitted a Statement of Use to the PTO in which Registrant represented to the PTO that it was using the AMC (and design) mark in commerce in connection with automobiles and structural parts thereof. Registrant made this representation to induce the PTO to issue a registration. …

22. On November 18, 2004, Registrant submitted substitute specimens and a Response to Office Action to the PTO in which Registrant represented to the PTO that it was using the AMC (and design) mark in commerce in connection with “automobiles and structural parts thereof.” Registrant made this representation to induce the PTO to issue a registration. …

23. On January 22, 2005, Registrant submitted substitute specimens and a Response to Office Action to the PTO in which Registrant represented to the PTO that it was using the AMC (and design) mark in commerce in connection with “automobiles and structural parts thereof.” Registrant made this representation to induce the PTO to issue a registration. …

24. As of May 26, 2009, years after Registrant represented to the PTO that it has used the AMC (and design) mark in commerce in connection with automobiles, Registrant, in fact, never offered, advertised, or sold any automobiles under the AMC (and design) mark. (See Registrant’s Responses to Petitioner’s First Set of Requests for Admission attached as Exhibit D ¶¶3, 5, 6, 8, 15.)

25. As of May 26, 2009, years after Registrant represented to the PTO that it has used the AMC (and design) mark in commerce in connection with structural parts for automobiles, Registrant, in fact, never offered, advertised, or sold any structural parts for automobiles under the AMC (and design) mark. (See Exhibit D ¶¶ 4, 7, 9, 16, 23.)

26. Registrant has never used its AMC (and design) mark in commerce in connection with automobiles.

27. Registrant has explicitly admitted that it has never used its AMC (and design) mark in commerce in connection with structural parts for automobiles.

28. The representations Registrant made to the PTO on October 31, 2004, November 18, 2004, and January 22, 2005 were each false.

29. Respondent knew that the representations were false.

30. Respondent knowingly made material misrepresentations to the PTO to procure Registration No. 2,949,439.

31. The PTO relied on the representations in issuing Registration No. 2,949,439.

32. The PTO would not have issued Registration No. 2,949,439 but for Registrant’s false representations.

33. Respondent’s actions in the procurement of Registration No. 2,949,439 constitute fraud, thereby invalidating Registration No. 2,949,439. Accordingly, Registration No. 2,949,439 should be cancelled in its entirety.

The Board pointed out that FRCP 9(b) requires that fraud be pleaded with particularity. Intent to deceive must also be pleaded, although it may be averred generally.

The Board found that DC "has sufficiently pleaded a fraud claim, including that respondent had the requisite intent to deceive the USPTO in the procurement of its registration." DC stated specifically the misrepresentations of fact and alleged that they were false and material and were relied upon by the PTO.

Further, we find the assertions in para. No. 30, combining the references “material misrepresentations” “knowingly made” and “to procure” a registration, to constitute an allegation of respondent’s intent. That is, where a pleading asserts that a known misrepresentation, on a material matter, is made to procure a registration, the element of intent, indispensable to a fraud claim, has been sufficiently pled.

The Board, noted, however that "the preferred practice ... is to specifically allege the adverse party's intent to deceive the USPTO, so that there is no question that this indispensable element has been pled."

AMC's specimen of use
The merits: The Board denied DC's summary judgment motion because it failed to show the absence of a genuine issue of material fact regarding AMC's intent. In short, DC offered no direct evidence regarding AMC's intent to deceive the PTO, nor "any indirect or circumstantial evidence which would lead us to the inevitable conclusion (which on summary judgment means the absence of any genuine issue of material fact) that respondent had the intent to deceive the office, or at least had a reckless disregard for the truth."

Finally, the Board noted that AMC apparently may not, in fact, be using the subject mark, but that was beside the point, since the motion for summary judgment was brought only on the fraud claim.

TTABlog comment: Note the Board's suggestion that "reckless disregard for the truth" would suffice for purposes of fraud. The CAFC declined to reach that issue in Bose [See footnote 2 therein].

Also note that the Petitioner set forth the specific dates for each false representation that constituted the alleged fraud. It did not make these allegations "on information and belief." It waited until after discovery was taken in order to make these concrete allegations.

TTABlog query: Who is this AMC Corporation, anyway? It appears to be some guy in Palmdale, California named Ronnie J. Simon.

Text Copyright John L. Welch 2010.

Finding Applicant's 2(f) Evidence Misdirected, TTAB Affirms Requirement for Disclaimer of CHILDREN'S in "THE CHILDREN'S PLACE"

The Board affirmed a requirement that Applicant disclaim the word CHILDREN'S in the mark THE CHILDREN'S PLACE & Design for children's clothing, retail store services featuring same, and other goods and services. In a rambling 17-page decision, it found the word to be at least merely descriptive (Applicant conceded same) and Applicant's Section 2(f) evidence to be, simply put, off the mark. In re The Children's Place Services Company, LLC, Serial No. 77216904 (January 7, 2010) [not precedential].

Applicant TCP attempted to overcome the disclaimer requirement by establishing that the word CHILDREN'S has acquired distinctiveness. Unfortunately, however, Applicant did not submit any evidence that the word CHILDREN'S per se has acquired distinctiveness. Instead Applicant provided proofs that the phrase THE CHILDREN'S PLACE as a whole has acquired distinctiveness.

But Applicant did not claim that the entire mark had acquired distinctiveness under Section 2(f). It asserted only that CHILDREN'S had. In short, "applicant's arguments that, when registration is sought pursuant to Section 2(f), a disclaimer of a descriptive element of the mark is not required, are not applicable to the present situation."

Had Applicant claimed acquired distinctiveness for the mark as a whole, then its proofs would have been relevant (but if the word CHILDREN'S is generic, it would still have to be disclaimed). However, because Applicant was attempting to claim acquired distinctiveness of only the word CHILDREN'S, it had to submit proof of distinctiveness of that word alone.

Had Applicant submitted proof of the distinctiveness of CHILDREN'S alone, then the Board would have considered the genericness of the word (and would have found it to be generic). But it did not have to reach that issue because Applicant didn't get past the mere descriptiveness hurdle.

TTABlog comment: As the Board observed, Applicant was essentially seeking exclusive rights in the word CHILDREN'S in connection with children's stores and children's clothing. In other words, following Applicant's logic, it would be entitled to register the word CHILDREN'S for these goods and services. Are you kidding me?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability on this Specimen of Use

Here's a not so deli-cate appellate situation: Applicant seeks to register the mark DELI EXPRESS SAN LUIS in standard character form for "burritos; snack cakes; and snack rolls, namely, sweet rolls." Examining Attorney Nakia D. Henry refused registration on the ground that the mark in the drawing (i.e., DELI EXPRESS SAN LUIS) is not a substantially exact representation of the mark as it appears on the specimen (shown immediately below). See Section 1(d)(1) of the Act, and Trademark Rule 2.51. Would you affirm or reverse the refusal? In re E.A. Sween Company, Serial No. 77048091 (January 12, 2010) [not precedential].

Applicant E.A. Sween Company owns registrations for SAN LUIS and for DELI EXPRESS. It argued that the applied-for mark "is merely a composite of these previously-registered marks and that it is 'free to choose the elements of its composite marks that it wants to register,' citing to TBMP Sec. 807.12(d)...."

The question is whether Sween's proposed mark "will be perceived as a unitary mark, albeit a composite of elements, or if it will be viewed as constituting multiple marks." The analysis is "necessarily subjective."

The Board affirmed the refusal to register, ruling that DELI EXPRESS and SAN LUIS are depicted "in such a manner that consumers would not perceive them as constituting a single composite mark." It noted the different colors and fonts, the border around DELI EXPRESS, and the triangle design between the two phrases.

Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page. Even accepting applicant's assertion that DELI EXPRESS is a house mark, there is nothing about the use of SAN LUIS that suggest that these two elements together form the impression of a single trademark.

And so the Board found that the drawing of the mark is not a "substantially exact representation of the mark as used in commerce" and it affirmed the refusal.

TTABlog comment: How did you do? Do you think you have what it takes to be a TTAB judge? Why not?

TTABlog further comment: A commenter says the Board was wrong here in view of a prior, non-precedential Board decision in In re Jordan Outdoor Enterprises, Ltd., Serial No. 78298898 (August 9, 2006) [not citable] [TTABlogged here]. I think the Board got it wrong in Jordan when it found that the specimen below supported registration of the mark REALTREE HARDWOODS GREEN HD.

TTABlog reader comment: A reader has e-mailed the following comment to me regarding how to reconcile Sween with Jordan:

(1) The question in Jordan was whether applicant’s decision in its drawing to delete two literal elements [BILL JORDAN’S and HIGH DEFINITION] “mutilated” the mark as actually used. On that issue, there exists a whole line of cases such as In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999). There was no such issue in the Sween case.

(2) We all know the famous expression about pornography, "I know it when I see it." Jordan talks about the fact that the triangle was overlapping, and the Office should give applicant some deference in selecting for the drawing in its applicant for registration what it considers to be its mark. By contrast, Sween points out the obvious – these are two distinct trademark, on the same plane, yes, but somewhat more remote, e.g., citing to In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977). Perhaps this panel would have followed Jordan with the following specimen image (and of course, to be similar to Jordan, would have been asked by the Trademark Examining Attorney to focus solely on the question of whether applicant was free to leave out of a typed drawing “Quality Since 1955,” without mutilating the image as used):

Steve Baird, counsel for Applicant Sween, comments here at the Duets Blog.

Text Copyright John L. Welch 2010.

WYHA? TTAB Finds "INFUSED CIGARS" Generic for ... Guess What?

I don't smoke cigars, so I though an infused cigar was a cigar that would explode when you lit the fuse. Apparently not. The Board affirmed a refusal to register INFUSED CIGARS for cigars, finding it to be a generic term for cigars infused with flavor. Would You Have Appealed this refusal? In re Jonathan Drew, Inc. dba Drew Estate, Serial No. 78979742 (December 31, 2009) [not precedential].

The Board began by finding that the genus of goods is "cigars" and it ruled that the relevant public includes not only cigar "aficianodos" but also "ordinary members of the general public."

As to the meaning of the term, Examining Attorney Priscilla Milton relied on dictiona

ry definitions of "infused," and on website and Lexis/Nexis evidence showing that, as applied to cigars, the word refers to "cigars that are flavored, or have been treated or processed in some way to absorb a flavor." Applicant Drew Estate admitted that its goods are "flavored cigars." Consumer website evidence also showed the public's familiarity with the term INFUSED CIGARS and its significance.

To be blunt, the Examining Attorney's evidence established, prima facie,"that the primary meaning of INFUSED CIGARS is generic for 'cigars.'"

Even if, as Applicant claimed, it is a "leading maker" or "pioneer" of infused cigars, and even if Applicant coined the term, these facts do not overcome the genericness of the term or make it registrable.

While sellers may recognize applicant as a well known maker or blender of cigars and that applicant is a significant source for "infused cigars," they nevertheless use the term "infused cigars" to refer to a type of cigar, rather than to brand of cigar. The record is clear that they do not recognize "infused cigars" to indicate the source of those cigars only in applicant.

Applicant argued that many of the articles and/or websites referred to Applicant's products (e.g., "Sauza Tequila Infused Cigar"), but the Board found this argument to be "irrelevant because ... cigar retailers use the term 'infused cigars' to refer to a type of cigar, rather than to a brand of cigar." Moreover, many other companies refer to their cigars as "infused cigars" and the flavored cigars of other producers are advertised or promoted as infused cigars.

The Board observed that this is not a case of "mixed" usage of the term, sometimes in a generic sense and sometimes as a mark. Here, there was no evidence of use or recognition of "infused cigar" as a mark.

Therefore the Board concluded that INFUSED CIGARS is incapable of distinguishing Applicant's goods and is ineligible for registration on either the Principal or Supplemental Register.

TTABlog note: Frank Herrara keeps up with tobacco-related trademark developments at his blog, Herrara on Cigar Law. He also hosts a cigar party at the INTA annual meeting, so if you are interested, give him a holler.

Text Copyright John L. Welch 2010.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TITANIUM" for Kitchen Applicances

Would You Have Appealed this one? The USPTO refused registration of the mark TITANIUM for various kitchen appliances on the ground of mere descriptiveness under Section 2(e)(1). The Board affirmed in a seven-page opinion. In re BSH Home Appliances Corporation, Serial No. 77010429 (January 5, 2010) [not precedential].

Examining Attorney Allison P. Schrody contended that "Titanium" is merely descriptive because it identifies "the color or type of metal finish applied to the goods." She supplied Internet printouts showing use of the term in connection with large kitchen appliances (e.g. "Thor Titanium Washer/Dryer").

Applicant BSH ignored this evidence and lamely argued that TITANIUM is merely suggestive of the goods because the mark "requires imagination to reach any conclusion as to the nature of the goods." [I imagine they have a titanium finish - ed.] According to Applicant,“consumers would undergo a mental pause [because]...due to the wide range of products that may be made of titanium or feature a titanium finish, a potential purchaser of the goods would pause to reflect as to the type of goods or services that may be offered in connection with [the] mark "

The Board thought that argument was just BSH, pointing out once again that the determination of mere descriptiveness must be made not in the abstract, but in the context of the involved goods. The question is not whether one can guess what the goods are from the mark, but whether the mark conveys information about the goods.

Here, consumers will immediately understand that the word "titanium," when used in connection with kitchen appliances, describes the color or finish of the goods.

And so the Board affirmed the refusal.

TTABlog comment: This "mere-descriptiveness-as- a-guessing-game" argument made my list of the "Top Ten Losing TTAB Arguments" back in 2001.

Text Copyright John L. Welch 2010.

Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal

Acknowledging that the Board's treatment of surname refusals has been "inconsistent with regard to the number of surname listings," the Board found RENATI to be an "extremely rare surname" and it reversed a Section 2(e)(4) refusal to register the mark for goods and services in classes 3, 25, 43, and 44, In re The House of Terrance Proprietary Limited, Serial No. 79048704 (January 6, 2010) [not precedential].

The Examining Attorney provided evidence of only seven individuals with the surname RENATI. Applying the relevant Benthin factors, the Board observed that "it is important to weigh 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, 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..."

Based on the record evidence the Board found that "RENATI is an extremely rare surname."

Turning to the other Section 2(e)(4) factors, the Board noted that Applicant uses "Renati" as a "surname substitute" on its website, and thus this factor weighs against Applicant.

The Examining Attorney provided negative dictionary evidence showing that "Renati" has no other meaning, but Applicant provided evidence that "Renati" is a given name. In fact, the record included more examples of "Renati" as a given name than as a surname, and so the Board found that the term does have significance other than as a surname.

As to "look and feel," because "Renati" is an extremely rare surname and is also a given name, "the examining attorney has not met her burden of demonstrating that 'Renati' has the look and feel of a surname".

Balancing these factors, and giving the first factor "more weight" than the others "because the record shows only seven persons with the surname 'Renati," the Board reversed the refusal.

TTABlog note: For a discussion of Judge Seeherman's view of Section 2(e)(4), which view seems to be winning some converts on the Board, see Section IV of this article.

Text Copyright John L. Welch 2010.

TTAB Issued 52 Precedential Decisions in 2009

The TTAB issued fifty-two (52) precedential opinions in 2009, a slight drop-off from last year's total of 55. Its post-Bose fraud decisions in Enbridge and Asian and Western (Nos. 40 and 42) and its finding of a lack of bona fide intent on the part of the Section 44(e) applicant in Honda v. Winkelmann (No. 15) were among the most noteworthy. And in a dozen or so procedural rulings, it dealt with various nuances of TTAB practice, with an emphasis on the TTAB rules as amended in 2007.