TTABlog Article: The Top Ten TTAB Decisions of 2009®

This afternoon, I am speaking at the 54th Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. A copy of my paper, entitled "The Top Ten TTAB Decisions of 2009" may be downloaded here. The first half of the paper talks about the Bose and its ramifications, while the second half discusses my selections of the Big Ten cases for the year MMIX.

TTAB Vacates 2008 Fraud Ruling in Xel Pharmaceuticals Case

In an Order issued on February 25, 2010 (here), the Board vacated its March 7, 2008 ruling in Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, wherein the Board had entered partial summary judgment on the ground of fraud. It had found that Respondent Xel Pharmaceuticals committed fraud as to four of its registrations by filing knowingly false Statements of Use (signed by its attorney) regarding use of its XEL HERBACEUTICALS marks on some of the goods listed in its registrations. [TTABlogged here].


The Board observed that its March 7, 2008 order was "interlocutory in nature, did not result in the immediate cancellation by the Commissioner of the noted registrations, and ... was not immediately appealable, because it did not result in full decision of the claims in this case."

Relying on the Bose decision, Xel, on January 7, 2010, filed a motion to vacate the Board's entry of partial summary judgment on HCI's fraud claim. To date, HCI has not filed a brief in response to the motion to vacate. In view of HCI's failure to respond in any manner to Xel's motion to vacate entry of partial summary judgment, that motion is hereby granted as conceded.

Moreover, in view of the Bose decision, the Board sua sponte reviewed the pleading of HCI's fraud claim and found that it was infsufficiently pleaded. "HCI's pleaded fraud claim is based on allegations that Xel 'knew or should have known that it was not using' the involved marks on all of the goods *** and does not allege that Xel filed those statements of use with the requisite intent to deceive the USPTO. *** In addition, HCI’s fraud claim is based '[u]pon information and belief' without a specification of facts upon which such belief could reasonably be based."

The Board allowed HCI thirty days to file an amended petition to cancel repleading its fraud claim in accordance with the Bose decision.

In a footnote, the Board pointed out that "The standard for finding intent to deceive is stricter than the standard for negligence or gross negligence. Still open is the question whether a submission to the PTO with reckless disregard of its truth or falsity would satisfy the intent to deceive requirement. Bose, 91 USPQ2d at 1942, fn. 2." [For a graphical illustration of this point, go here].

Text Copyright John L. Welch 2010.

TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?

Yes, you got it! The Board found the term JOJOBA BUTTER BEADS to be generic for "semi-solid wax for use in the manufacturing of other products in the field of personal care, cosmetics and cosmeceutical formulations and preparations," and it therefore granted International Flora's petition for cancellation of Desert Whale's Supplemental Registration. International Flora Technologies, Ltd. v. Desert Whale Jojoba Company, Inc., Cancellation No. 92048102 (February 23, 2010) [not precedential]. [TTABlog note: I provided some assistance to Petitioner in this matter, and so I will keep my editorial comments to a minimum].

male jojoba flowers
The Board first noted that, by obtaining a Supplemental Registration, Desert Whale admitted that JOJOBA BUTTER BEADS is not inherently distinctive. Consequently, its arguments that the term is "an oxymoron or a play on words" cannot be considered.

The Board next ruled that the genus of goods is defined by Desert Whale's identification of goods, and includes semi-solid wax in bead form. The relevant purchasing public includes sophisticated purchasers (e.g., cosmetic formulators at large companies) and home "crafters" who make cosmetic products for themselves. Although Desert Whale does not in fact sell its product in the small quantities purchased by crafters, the genus of goods is not so limited.

The record included definitions of the individual words, industry ingredient listings, third-party generic uses of "jojoba butter," use of that term generically by Desert Whale, third-party generic uses of "beads," and third-party uses of "jojoba butter beads" as an ingredient name.

The Board took an interesting take on the current tests for genericness: In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) says that for a compound word (like SCREENWIPE), dictionary definitions of each constituent word may alone suffice to proved genericness, but for a phrase (like SOCIETY FOR REPRODUCTIVE MEDICINE), In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires proof that the phrase as a whole be used generically.

The Board agreed with Desert Whale that definitions of the individual words "jojoba," "butter," and "beads" would not be enough to prove genericness here. "However, the evidence shows that the term 'jojoba butter,' and not merely the individual words in that term, is generic as well."

We think that “jojoba butter beads” is analogous to “milk chocolate bar,” as combining the primary ingredient of the product with the shape, and that it is appropriate to treat it as a compound term. *** ... the combination of them lends no additional meaning to the term.*** The space between the generic terms “jojoba butter” and “beads” does not disqualify the mark from the Gould analysis. *** If anything, the terms appearing as they should in normal usage make it even more recognizable as a generic term.

In any case, the Board also found the mark generic under American Fertility, because the record showed that "third parties use the entire phrase 'jojoba butter beads' generically as well." [Then why the discussion about Gould, one might ask? Perhaps because the Board does not like the often senseless distinction between phrases and compound words when determining genericness. - ed.]

And so the Board granted the petition for cancellation.

Text Copyright John L. Welch 2010.

Trademark Public Advisory Committee (TPAC) Webcast Today

The Trademark Public Advisory Committee (TPAC) will webcast its meeting today beginning at 9:00 EST. [Announcement here.] TTAB Acting Chief Judge Gerard F. Rogers is scheduled to appear from 10:20 to 11:20 to discuss the topics listed below:

Discussion with TTAB Judge Gerard Rogers regarding TTAB matters.

1. Brief report on current TTAB speed statistics and case volume statistics.
2. Status report on preparing a request for comments on:
   • A possible, alternative fast-track for TTAB opposition and cancellation cases.
   • Making the TTAB more assertive in encouraging settlement.
   • Possible limits on consented extensions.
3. Status report on getting TBMP up to date, easily searchable and in HTML, including plans for frequency of updates after this revision.
4. Report on recent developments with ACR, if any.
   • When will there be more procedures or structure available to potential users of ACR?
5. Discussion regarding how TTAB deals with cases that have lingered on the docket for a very long time.
6. Discussion of progress toward the TPAC goal of increasing number of precedential TTAB decisions.
7. Report on change to rules of evidence for proving USPTO records in TTAB proceedings.

Which Law Firms Filed the Most Petitions for Cancellation in 2009?

Back by popular demand, Towergate Software has compiled a list of the law firms that filed the most petitions for cancellation in 2009 (here). [Note that you may expand the list to show the name of the plaintiff and the proceeding number.]


This new list is a companion to last week's list of law firms filing oppositions (posted here). In October 2009, I posted (here) a list of the entities (i.e., parties) that filed the most oppositions, cancellations, and extension requests (combined).

Please send your ideas for additional lists to Towergate. They enjoy doing this.

Text Copyright John L. Welch 2009.

Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures

It seems that any decision involving a violation of the Board's "new" rules (new since 2007) will be labeled "precedential." Well, here's another one. Opposer Dating DNA failed to serve its initial disclosures and so, when it served written discovery on Applicant Imagini, the latter refused to answer, pointing to Rule 2.120(a)(3): "A party must make its initial disclosures prior to seeking discovery...." Because the discovery period had closed, Opposer then moved to re-open discovery and sought an Order compelling Imagini to answer the discovery. No dice, said the Board, procedurally. Dating DNA, LLC v. Imagini Holdings, Ltd., 94 USPQ2d 1889 (TTAB 2010) [precedential].

Dating DNA feebly claimed that its failure to serve initial disclosures was an "oversight" due to "some clerical error," and that the error was harmless. It accused Imagini of trying to "game the system." [What one party calls "gaming the system" is often what the other calls "just following the Rules" - ed.] Opposer further whined that Imagini "should not have waited until after discovery closed to inform opposer that it would not be responding to opposer's discovery requests." Imagini pointed out that the written discovery requests were served on June 9, 2009, that discovery closed on July 12, 2009, and that its refusal to answer was served on Dating DNA on July 14, 2009, the due date for responses.

Motion to Re-open Discovery: It probably comes as no surprise that the Board ruled in favor of Imagini on this motion. The Board pointed out that Dating DNA must show "excusable neglect" in order to justify re-opening. Noting that Opposer delayed in serving its initial disclosures until July 29, 2009, the Board found that it had failed to establish "that its delay was outside of its reasonable control" and that the length of the delay was meaningful. "These factors easily outweigh the relative lack of prejudice to applicant."

Motion to Compel: The motion to compel was likewise denied. "That applicant did not inform opposer of its position until two days after discovery closed is not necessarily a function of applicant attempting to 'game the system,' but instead a function of opposer choosing to serve its discovery requests late in the discovery period."

Motion for Consolidation: The Board granted Dating DNA's motion for consolidation of these two oppositions, which involve "identical parties and similar marks and issues." The oppositions concern Imagini's applications to register the marks VISUALDNA and VISUALDNA SHOPS for various services. In the latter case, discovery remains open until August 5, 2010, and so all was apparently not lost for Opposer vis-a-vis its discovery efforts.

Tip from the TTABlog: Read the rules.

Text Copyright John L. Welch 2010.

Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

You can learn an awful lot about trademark law by reading this 68-page decision covering a myriad of issues concerning Section 2(d) likelihood of confusion and Section 43(c) dilution. Citigroup opposed registration of the marks CAPITAL CITY BANK, CAPITAL CITY BANC INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANK INVESTMENTS for banking and financial services, in view of the registered mark CITIBANK and variations thereof for banking services. The Board dismissed the opposition, finding no likelihood of confusion or dilution primarily in view of the differences in commercial impression engendered by the parties' marks. This posting will hit the high points of the Board's ruling, but readers are urged to consume the entire opinion. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential].


Fame as of when?: The Board began with a discussion of Citigroup's burden of proof in establishing when the CITIBANK mark became famous for dilution purposes. Normally, in opposing an I-T-U on dilution grounds, an opposer must show that fame was acquired before the I-T-U filing date. Here, however, each of Applicant's three I-T-U's include the term CAPITAL CITY BANK (the fourth applied-for mark), and so the Board concluded that Citigroup must show that its mark became famous prior to the first use date of that use-based application.

Morehouse defense: Applicant claimed that Citigroup could not be harmed by registration of the applied-for marks because Applicant already owns three registrations for marks containing the term "Capital City Bank." As usual, this defense failed because the marks of the prior registrations (which included the star logo shown above) and the recited services are not "essentially the same" as the applied-for, standard character marks at issue here.

Opposer's registrations: Citigroup attempted to introduce its registrations into evidence via the testimony of its senior IP counsel, but it failed because she "did not expressly testify that the registrations are owned by opposer and that they are currently subsisting." However, Applicant did not contest Citigroup's ownership of the registrations, nor whether they are still in force. Moreover, Applicant referenced the registrations in its brief. Therefore, the Board treated them as of record.

Opposer's family of marks: The question was whether Citigroup established a family of marks prior to Applicant's first use date. The Board found that Applicant may rely on its use of the mark CAPITAL CITY BANK GROUP to establish priority, and that its first use date was 1975. Citibank did not address this issue in its brief, and its evidence failed to establish an earlier date for its family of marks. Thus the family of marks doctrine was unavailable to Citigroup.

Likelihood of Confusion: Citigroup presented overwhelming evidence that CITIBANK is a famous mark for Section 2(d) purposes. The Board then found the services involved to be, at least in part, identical as to each opposed application. As a result, the Board presumed that the channels of trade and classes of customers are the same. Next, the Board found the lack of actual confusion to be a factor weighing in favor of Applicant, since there had been ample opportunity for confusion to arise.

The key issue was the similarity or dissimilarity of the marks. The Board found that Applicant's marks are not similar to Citigroup's marks:

Since the commercial impression of applicant’s marks is the geographic designation CAPITAL CITY and the generic term “Bank,” applicant’s marks are not similar in appearance, sound or meaning with opposer’s CITIBANK marks. The absence of any reported instances of actual confusion lends credence to this finding because, considering the widespread advertising of opposer’s marks and the identity of the services, if the marks were similar then it is likely that there would be some reported instances of confusion or mistake as to source such as misdirected telephone calls, visits, or requests for information, or other indicia of confusion in the marketplace.

Balancing all the factors, the Board concluded that the "significant differences" between the marks outweigh the fame of the CITIBANK marks.


Likelihood of Dilution by Blurring: Based on the record, the Board found that the CITIBANK marks became famous in 1983, after Applicant's first use of the CAPITAL CITY BANK mark. Therefore Citigroup's dilution claim failed for that reason alone.

Moreover, the Board reviewed the statutory dilution factors and found no likelihood of dilution:

We have found that the marks are not substantially similar, that there are numerous third-party users of the term “City Bank,” that there is no evidence demonstrating any association between the parties’ marks, and that there is no evidence that applicant intended to create an association with opposer’s marks[; these factors] outweigh the fame and distinctiveness of the CITIBANK marks.

Decision: The Board dismissed the opposition.

TTABlog comment: This is the first TTAB decision on dilution in a long time. Usually, as here, the dilution claim is combined with a Section 2(d) claim, but the Board never gets to the dilution issue. If the opposer proves Section 2(d) fame (a lower standard than for dilution) then the strength of the mark and its broad scope of protection will typically bring victory on that claim and the Board will decline to reach the dilution issue. If the opposer fails to prove Section 2(d) fame, then it perforce will not satisfy the higher fame standard for dilution, and again there is no need for the Board to discuss dilution at any length. Here we have the unusual case of an opposer losing on the likelihood of confusion issue even though its mark is famous.

Can you think of a situation in which an opposer could lose on the Section 2(d) claim but win on the dilution claim? Answer from Marty Schwimmer: isn't that why we have dilution? E.g., Buick for shoe polish. [Or TTABLOG for cat food].

Text Copyright John L. Welch 2010.

Parties Respond to TTAB Order in Oldest Pending Case

Counsel for the parties in the oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, have responded (here) to the Board's Order of January 20, 2010 [TTABlogged here]. The proceeding has been suspended for nearly 25 years in view of a civil action in the Maryland federal court, which action has itself been administratively closed since 1984.


Counsel for the parties now request a 60-day extension of time "to memorialize understandings reached since the 'administrative closing'" of the federal civil action.

With respect to the "administrative closing," this "closing" occurred during a meeting with the parties' attorneys in the chambers of Judge John Hargrove (deceased) on June 8, 1984 (Exhibit A) [not attached - ed.] during which Judge Hargrove announced that the case was "administratively closed" and that he was obtaining all files from the clerk's office and would lock the files in his closet. A search so far of our files revealed no further communication from Judge Hargrove regarding this case. This administrative closing, a concept unfamiliar to the undersigned attorneys and other attorneys with whom they have consulted, has given the parties sufficient time to settle their grievances and to develop a spirit of cooperation, as well as actual cooperation. Thus the undersigned will take steps to have the Baltimore case formally discussed [dismissed? - ed.], if unknown to the undersigned, this has not already occurred.

The parties also note that "In the time allotted for this response, the parties have not been able to access all of their records in that a substantial portion of the records are in storage."

So there you go. It looks like we may have soon have to begin looking for a new "oldest pending TTAB case."

Text Copyright John L. Welch 2010.

TTABlog on Tour: John Marshall IP Law Conference - February 26th

The TTABlogger will be returning home to Chicago on Friday, February 26th, as a speaker at the 54th Annual Intellectual Property Law Conference sponsored by the Center for Intellectual Property Law of John Marshall Law School. [Program here]. [It's been a long, strange (?) trip from now-defunct St. Leo's grade school at 77th and Emerald on the South Side, to the John Marshall IP Conference. Who knew?]


I will be reviewing the current status of the Board's fraud jurisprudence, as well as my choices for the "The Top Ten TTAB Decisions of 2009."

Hope to see you there. Oske Wow-Wow!
.

TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses

Deeming Opposer's mark to be "strong and entitled to a broad scope of protection," the Board sustained this Section 2(d) opposition to registration of the mark SWEDISH LUXURY for, inter alia, mattresses and related retail store services [SWEDISH disclaimed], finding it confusingly similar to the registered mark SWEDISH SLEEP SYSTEM for "mattresses, cushions and pillows made of elastic viscous foam" [SLEEP SYSTEM disclaimed]. However, the Board threw out Opposer's claim under Section 2(e)(3), finding that the opposed mark is not primarily geographically deceptively misdescriptive in light of the lack of proof that consumers believe that "Sweden" indicates the origin of the mattresses. Tempur-Pedic International Inc., et al. v. Denver Mattress Co., LLC, Opposition No. 91169165 (February 4, 2010) [not precedential].


The Board's 2(d) analysis was straightforward. It rejected Opposer's claim that its mark is famous because, despite impressive evidence of sales and advertising, Opposer failed to separate the recognition of SWEDISH SLEEP SYSTEM from that of the TEMPUR-PEDIC mark that always accompanies it.

The Board found the goods of the parties to be legally identical and Applicant's services to be closely related or complementary to Opposer's goods. Applicant argued that it sells its products only at its own stores and therefore that confusion cannot occur. The Board pointed out, however, that there are no such restrictions in Applicant's identification of goods, nor are there any limitations in Opposer's registration, and so the Board must presume that these identical goods travel in the same channels of trade to the same classes of customers.

The fact that mattresses are purchased with some care slightly favored Applicant, but the Board observed that the memories even of discriminating purchasers are not infallible.

As to the marks, since the goods are in part identical, a lesser degree of similarity is needed to support a likelihood of confusion finding. The Board found the marks to be "substantially similar in appearance, sound, connotation and commercial impression due to the shared term 'SWEDISH.'" Customers are likely to assume that Applicant's mark is a "variant" of Opposer's mark.

Applicant's evidence of third-party use of the word SWEDISH failed to establish widespread use of similar marks for bedding products, and it therefore had no impact on the strength of Opposer's mark.

And so the Board sustained Opposer's Section 2(d) claim.

With regard to the Section 2(e)(3) claim, Opposer argued that "Sweden is noted for its high quality and high reliability furniture products ... and because Applicant's goods do not originate in Sweden, the goods/place association between SWEDISH LUXURY and Applicant's memory foam products would be material to a consumer's decision to purchase the goods."

The Board, however, found Opposer's evidence "stale" (more than ten years old) and/or of little probative value, concluding that Opposer failed to demonstrate that consumers are likely to believe that Sweden indicates the origin of Applicant's mattress.

TTABlog comment: Did you know that SWEDISH FISH is a registered trademark? I hate them when they are stale. Fish, not trademarks

Text Copyright John L. Welch 2010.

"HEALTHY HOME VACUUM" Not Merely Descriptive For Vacuum Cleaners, Says TTAB

The Board dismissed this Section 2(e)(1) opposition to registration of the mark HEALTHY HOME VACUUM, finding it not merely descriptive of vacuum cleaners [VACUUM disclaimed]. The Board concluded that the mark "does not, in any clear or precise way, serve to immediately describe a particular characteristic or feature of the goods with any degree of particularity." Oreck Holdings, LLC v. Bissell Homecare, Inc., Opposition No. 91173831 (February 16, 2010) [not precedential].


The Board first resolved a few evidentiary skirmishes, the most interesting involving several third-party registrations attached to Bissell's main brief. Oreck objected as to their timeliness, but Bissell argued that the registrations had been submitted during prosecution and were therefore part of the record pursuant to Trademark Rule 2.122(b)(1).

The Board recognized that it must consider the impact of the CAFC's recent decision in Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.2d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009), wherein the appellate court overturned a long-standing Board doctrine by ruling that "the entire file of the involved application (or registration) – 'including any evidence submitted by the applicant during prosecution' – is part of the record of the relevant inter partes proceeding, without any action by the parties." Id. at 1628.

And so the Board ruled the these third-party registrations do form part of the record [but it also found them to be of "very limited probative value," since the prior issuance of registration for similar marks is not binding on the Board].

Turning to the issue of mere descriptiveness, Oreck argued that the mark "describes a significant characteristic of its vacuum cleaners, namely that it is intended to create a 'healthy home' through the use of enhanced filtration." Opposer pointed to some internal use of the term "healthy home" in lower-case letters by Bissell, and some usage by participants in focus groups, but the Board pointed out that the internal uses did not impact the consuming public and the few dozen focus group uses were not a basis for extrapolation to the general public at large.

Bissell, on the other hand, urged that the mark "merely suggests a possible result or an aspirational goal (an improvement in the environment of a house), thus requiring imagination on the part of consumers."

The Board noted that there is often a fine line between suggestiveness and mere descriptiveness, but concluded that HEALTHY HOME VACUUM "falls on the suggestive side of the line."

The mark at issue, HEALTHY HOME VACUUM, is typical of so many marks that consumers encounter in the marketplace: a highly suggestive mark that tells consumers something general about the product, without being specific or immediately telling consumers anything with a degree of particularity. The information given by the mark is indirect and vague. The mark here conjures up indirect mental associations in the consumer’s mind; the thought process beginning with the mark HEALTHY HOME VACUUM and leading to a characteristic or feature of a vacuum cleaner is neither immediate nor direct.
* * *The mark HEALTHY HOME VACUUM does not serve to directly tell a consumer anything other than a vacuum cleaner is involved. The mark is an ephemeral concept and consumers are likely to have various ideas about how a vacuum cleaner results in a more environment-friendly home. That is, the mark conveys a nebulous and amorphous concept, almost like, as applicant contends, an aspirational goal.

In sum, the Board concluded that Oreck failed to prove by a preponderance of the evidence that Bissell's mark is merely descriptive.

Text Copyright John L. Welch 2010.

Applicant's Policing Efforts Lead to TTAB Reversal of Mere Descriptiveness Refusal of "PERFECTING SERUM" For Skin Moisturizer

Giving the benefit of the doubt to the Applicant, as required, the Board reversed a Section 2(e)(1) refusal to register the mark PERFECTING SERUM, finding it not merely descriptive of "skin moisturizer" [SERUM disclaimed]. Applicant Murad countered the Examining Attorney's third-party user evidence by showing that, through its enforcement efforts, all but two had stopped using the term or were actually selling Applicant's product. In re Murad, Inc., Serial No. 77556539 (February 4, 2010) [not precedential].


The Examining Attorney relied on dictionary definitions of "perfecting" and "serum," and on several third-party uses of the applied-for phrase. She argued that, even though some third-party users have stopped, that evidence is still relevant because "consumers have been extensively exposed to those advertisements." However, because of the lack of any evidence as to the length of use or the number of hits at the third-party websites, the Board could not draw any conclusions regarding this assertion.

The Board recognized that some third-party users may have stopped not because of a recognition of Applicant's trademark rights, but because of a desire to avoid litigation. Nonetheless, Applicant "has taken steps to ensure that third-party use has not caused the mark PERFECTING SERUM to lose whatever distinctiveness or exclusivity it has achieved."

Other than the two remaining third-party users, the Board found no evidence that the word "perfecting" is used by others in the industry, or that consumers understand that word "to describe a quality, characteristic or function of skin moisturizers or any other cosmetic or personal care product." The term "requires and effort of imagination on the part of the observer to resolve the incongruity between skin moisturizer and the term 'Perfecting' and 'Serum' (i.e., a serum does not normally perfect something.)"

The Board concluded that, because the record did not resolve its doubts regarding descriptiveness, it must rule in favor of the Applicant.

TTABlog comment: A Supplemental Registration plus aggressive policing paid off. Another reason why one should not scoff at a Supplemental Registration.

Text Copyright John L. Welch 2010.

Which Law Firms Filed the Most Oppositions in 2009?

Take a quick guess: what law firm filed the most oppositions in 2009? [FWIW: My guess was correct]. For the answer, check out the list (here) compiled by the folks at Towergate Software with TTABlog readers in mind.


In October 2009, I posted (here) a list of the entities (i.e., parties) that filed the most oppositions, cancellations, and extension requests (combined).

What other compilations would you like to see? Maybe Towergate will oblige.

Text Copyright John L. Welch 2009.

TTAB Finds Service Mark Application Void ab initio for Non-Use Because Services Were Not Rendered Prior to Filing

When an applicant files a use-based application but has not used the mark for any of the identified goods or services, the application is void ab initio. There's no need for the adversary to jump through the fraud hoops: intent doesn't matter. Here, the question was whether PLMIC had used its service mark prior to filing its application. The Board said no: PLMIC may have been "ready, willing, and able" to render the services, but it didn't do so before the filing date. Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential].


In this consolidated proceeding,Parametric attempted to raise a fraud claim but failed to plead it with the requisite particularity. However, the Board did find that Parametric presented a claim of non-use: that PLMIC's application is void because the mark was not "put into use" in commerce until after PLMIC filed its application.

Parametric also asserted likelihood of confusion under Section 2(d), claiming to be the prior user of the mark FLEXPLM for computer software and related services in the field of product design. PLMIC sought to register the identical mark for overlapping services, and opposed Parametric's application, claiming priority of use. There was no dispute as to likelihood of confusion.

Application void ab initio: PLMIC filed its application on March 13, 2006. It admitted that its first consummated sale of FLEXPLM services did not occur until September 2006, but it asserted that certain activities in March 2005 constituted "use in commerce:" it posted the mark FLEXPLM on the Internet "as an advertisement of 'already-available' services and [attempted] to sell, within March 2005, those services to AimNet."

However, the Board found that these activities, including the attempt to sell the services to a single potential purchaser "simply do not constitute 'use in commerce' as defined under the Act."

While such activities may constitute the advertising and promotion of PLMIC’s services, they do not encompass the rendering of those services. In that regard, the record reflects that PLMIC’s first technical service mark use in commerce in connection with its cooperative advertising and marketing services was when they were rendered to Management Roundtable in September 2006, almost one and one-half year after PLMIC’s activities of March 2005 and almost six months after the filing date of the PLMIC’s involved use-based application.

The Board therefore concluded that, because PLMIC was not rendering its services at the time it filed its use-based application, the application is void ab initio.

Likelihood of Confusion: For the sake of completeness, the Board also considered Parametric's Section 2(d) claim. For that purpose, it assumed that PLMIC's application is valid and that it had made use of its mark as of the filing date. Parametric proved first use its mark on May 26, 2005, prior to PLMIC's filing date (which is the earliest date on which PLMIC is entitled to rely).

The Board then looked at whether, for purposes of priority on PLMIC's opposition, PLMIC's activities in March 2005 (while not technical trademark use) constituted use analogous to trademark use. The Board concluded that PLMIC's evidence fell "far short of establishing that potential purchasers make an association in their minds between the FLEXPM mark as a source indication and PLMIC's cooperative advertising and marketing services."

In sum, because PLMIC did not establish that it had made trademark use or use analogous to trademark use prior to either May 26, 2005, when PTC commenced use of its mark, or the July 13, 2006 filing date, we find that PLMIC failed to establish the requisite priority. Accordingly, it cannot succeed on its Section 2(d) claim.

And so the Board sustained Parametric's opposition and dismissed that of PLMIC.

TTABlog comment: I found the Board's discussion of priority in the two oppositions rather murky. Why was PLMIC's claimed "use analogous to trademark use" irrelevant with respect to Parametric's opposition?

Text Copyright John L. Welch 2010.

TTABlog Bonus: Your Very Own FRAUD-O-METER™

Some say that a picture is worth a thousand words, and that is certainly true with regard to the TTABlog FRAUD-O-METER™ brand legal indicator. We all know that the CAFC in In re Bose Corporation jettisoned the TTAB's "knew or should have known" standard for fraud set out in Medinol v. Neuro Vasx, ruling that the Board had "erroneously lowered the fraud standard to a simple negligence standard." The appellate court also held that proof of intent to deceive is required to establish fraud and it indicated that even "gross negligence" is not enough, but it declined to address the issue of whether "reckless disregard for the truth" would suffice.


The FRAUD-O-METER™ illustrates the current state of trademark fraud jurisprudence: the now defunct Medinol standard is depicted by the grey arrow resting in the "Negligence" wedge, while the white arrow, representing our post-Bose uncertainty, unsurely leans toward the "Reckless Disregard" wedge.

If the chart looks a bit blurry, then I suggest that you (1) move closer to your computer screen; (2) check your eyeglass prescription; or (3) double click on the chart for a larger version that you can print out or save as your computer wallpaper.

The next time you think you have a fraud case, pull out your FRAUD-O-METER™ and take a guess as to where the facts of your case fall. If you are the accused party, you apparently may safely fess up to gross negligence but not reckless disregard for the truth. For the accusing party, don't settle for proof of gross negligence; go for at least reckless disregard for the truth. [Just don't ask me how to tell the difference.]

TTABlog note: A hat tip to Nate Harris of Lando & Anastasi, LLP, for his assistance in putting the final touches (i.e., the arrows) on the chart.

Copyright John L. Welch and Nathan T. Harris 2010.

From the TTAB Website: Everything You Ever Wanted to Know About Accelerated Case Resolution (ACR)

At the TTAB website you will find three papers explaining the Board's Accelerated Case Resolution (ACR) program, by which parties may obtain "a final determination of their opposition or cancellation proceeding quickly and without the time and expense of a full trial." The first paper provides a general overview of ACR, the second answers frequently asked questions, and the third presents a list of "ACR Cases and Cases Illustrating ACR-like Efficiencies." The Board plans to update the case list as more parties take advantage of ACR.


Here are a few highlights from the first paper:

ACR is a procedure akin to summary judgment in which parties can receive a determination of the claims and defenses in their case promptly, but without the uncertainty of result and delay typically presented by standard summary judgment practice.

A typical ACR case is anticipated to be one in which the parties are able to stipulate to many facts, or in which each party expects to rely on the testimony of only one or two witnesses and the overall record is not extensive.

In order to take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board can resolve any issues of material fact. If the parties have already filed cross-motions for summary judgment, they may also stipulate that the Board may resolve any issues of material fact and consider the parties’ cross-motions as the parties’ final briefs in the case in lieu of a full trial.

Finding Suits, Handbags, and Footwear Related, TTAB Affirms 2(d) Refusal of "VABEENE" Over "VABENE"

The complementary nature of the goods, coupled with third-party registration evidence, led the Board to affirm a Section 2(d) refusal to register the mark VABEENE for "leather and imitations of leather and goods made of these materials, namely handbags and evening bags; trunks and traveling bags, umbrellas, parasols and walking sticks" and for "clothing namely footwear." The Board found Applicant's mark likely to cause confusion with the registered mark VABENE for "suits." In re Müller, Durrer & Müller, Schuhateliers, Serial No. 79028161 (January 22, 2010) [not precedential].


Applicant argued that the additional "E" in the applied-for mark "impacts the way the mark is pronounced." The Board pointed out, however, that because neither mark is a common English word, it must consider all possible pronunciations, including identical pronunciations.

Applicant also contended that the word VABENE translates from the Italian to "good," but the Board found no entry for the word in an Italian/English dictionary, and in any case it observed that this line of argument "ignores those potential purchasers who are not familiar with Italian or the Italian word 'vabene.'"

And so the Board found the marks to be "very similar in appearance and commercial impression."

Turning to the goods, Examining Attorney Aretha Somerville submitted third-party, use-based registrations that include footwear, handbags, and suits. Moreover, the Board found the goods to be complementary. [I know when I wear a suit I always carry a walking stick - ed.] And given the lack of any limitation on channels of trade in the application or cited registration, the Board must presume that the goods travel in all ordinary channels of trade to all classes of customers for the goods.

The Board concluded that confusion is likely and it therefore affirmed the refusal.

TTABlog comment: When I carry my walking stick, I get many compliments:


Text Copyright John L. Welch 2010.

Finding Restaurant Services and Sauces Related, TTAB Affirms 2(d) Refusal of "BLACK HORSE"

Finding restaurant services related to Applicant's "sauces, spice blends, dry rubs for meats and fish, marinades, dipping sauces, and glazes for meats and fish," the Board affirmed a Section 2(d) refusal to register the mark BLACK HORSE, finding it likely to cause confusion with the registered mark BLACK HORSE & Design shown immediately below. In re SKP and Associates, Inc., Serial No. 77040558 (February 5, 2010) [not precedential].


The Board not surprisingly found the similarity of the marks to weigh in favor of likelihood of confusion. "Because the design of a black horse in registrant's mark is a pictorial representation of the wording in both marks, such design further reinforces the similarities between them."

The key issue was the relatedness of the goods and services. The Board began by citing the oft-cited decision in Jacobs v. International Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982), which states that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." [Emphasis in original]. In other words, there is no per se rule that restaurant services and food products are related.

Here, the "something more" provided by the Examining Attorney consisted of more than 45 third-party registrations that covered both restaurant services and Applicant's food items, as well as website evidence for restaurant services and food items offered under a single mark (for example, Taco Bell, Emeril's, and K-Paul's).

The Board therefore concluded that applicant's goods and registrant's restaurant services are related.

As to channels of trade, Applicant futilely asserted that Registrant offers its services solely to members of the "Black Horse Golf Club" in Houston, Texas. However, because there is no limitation on channels of trade in the cited registration, the determination under Section 2(d) must be made on the basis of the service identified in the registration regardless of the real world situation.

Therefore, the Board must presume that Applicant's goods and Registrant's services will be offered in all appropriate channels. "This would mean that applicant's goods may be sold in regular retail supermarkets and other food stores, but, as shown by the evidence, such goods may also be sold directly by restaurants." Moreover the same classes of consumers, the general public, will encounter both the goods and the services.

Considering all the relevant du Pont factors, the Board found confusion likely and affirmed the refusal to register.

TTABlog comment: Well here's a good example of how the TTAB world diverges from the real world. Do you think a court would ever find trademark infringement here?

Text Copyright John L. Welch 2010.

Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing

The Board granted plaintiff's summary judgment motion in this Section 2(d) opposition/cancellation proceeding involving two entities owning registrations for the mark DON'T MESS WITH TEXAS for various clothing items. Applicant Richard Tucker admitted that TxDOT had priority of use (TxDOT proved it anyway), and TxDot easily fended off his feeble arguments regarding the lack of "significant" evidence regarding TxDOT's interstate use and the de mimimis nature of its actual confusion evidence. Texas Department of Transportation v. Richard Tucker, 95 USPQ2d 1241 (TTAB 2010) [precedential].


TxDOT owns four U.S. Registrations and a pending application for the subject mark for its promotional services and various goods including clothing. Tucker owns a registration and a pending application for the mark for various clothing items. TxDOT opposed Tucker's application and petitioned to cancel his registration.

The Board pointed out that the issue of priority is different in the two proceedings:

In the opposition, the issue of priority has been removed by virtue of TxDOT’s submission of status and title copies of its pleaded registrations. See King Candy, supra, which explains that the Trademark Act requires consideration under Section 2(d) of an opposer’s registration, regardless of whether the opposer is the prior user. By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998) (In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).

In any event, Tucker admitted that TxDOT had prior use of its mark. He therefore had little left to argue, so he first attacked the nature of TxDOT's use, arguing that it did not have "significant prior use" outside of Texas. The Board pointed out, however, that for priority purposes, prior significant use within Texas is sufficient.

Tucker then lamely argued that TxDOT's evidence of actual confusion was de minimis. The Board agreed that "the evidence may not conclusively establish actual confusion," but, as we all know, evidence of actual confusions is not necessary for a finding of likelihood of confusion.

TTABlog note: I'm wondering what makes this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2010.

Bummer! TTAB Finds "PEACH CLAIRE" for Lingerie Not Confusingly Similar to "PEACH BUNS" for Clothing

In an unexpectedly dull opinion, disappointingly devoid of illustrations, the Board dismissed an opposition to registration of the mark PEACH CLAIRE for lingerie, finding the mark not likely to cause confusion with the registered mark PEACH BUNS for women's clothing, including swimwear. Opposer's lack of proof regarding the relatedness of the goods, paired with the suggestiveness of the word PEACH for clothing, led to Opposer's downfall. GA Peach Buns, Inc. v. Voucia Corporation, Opposition No. 91174032 (January 21, 2010) [not precedential].


Although the parties' actual channels of trade were somewhat circumscribed, there were no such restrictions in the application or registration, and so the Board presumed that these items of everyday apparel "are sold in the same wholesale market as well as at least in some of the same retail channels, such as department stores, to the same ultimate consumers."

However, the Board noted that there is no per se rule that all clothing items are related, and so Opposer had the burden of proof to show that "consumers will believe that these different types of clothing identified by similar marks come from a single source."

The Board noted that "undergarments and outerwear are specifically different types of clothing, having different purposes," and the record lacked evidence that undergarments are complementary or functionally similar. Opposer submitted a Victoria's Secret catalog offering certain items of swimwear and undergarments under the same marks, but that was not sufficient to persuade the Board that "swimwear typically emanates from companies that produce underwear or that purchasers would naturally expect both products to emanate from the same source."

To top it all off, Opposer's president, stated that "I don't consider swimwear an undergarment" and "I would not wear it as underwear." And so the Board concluded, as the bottom line, that Opposer failed to carry its burden of proof to show the relatedness of the goods.

As to the strength of Opposer's mark, the "evidence as a whole falls far short of indicating strength and recognition of PEACH BUNS in opposer's market." Moreover, the Board found that PEACH BUNS is "by its nature" suggestive (again with help from Ms. Smith's own testimony):

In explaining the selection of opposer's mark, Ms. Smith states that she "had always been remembered amongst associates as the Georgia Peach with the perfect butt." *** In this regard we take judicial notice of the definition of "peach" as "Informal. a person or thing that is especially attractive, liked, or enjoyed"; and the definition of "buns" as "Slang. the buttocks." The mark suggests revealing clothing, or, for example, swimwear to show off an attractive part of the body.

Several third-party registrations for marks containing the word PEACH for clothing [for example, BEHIND EVERY GIRL THERE IS A PEACH] indicate that the word has a suggestive meaning.

Finally, the Board observed that when the goods involved "are not highly related, a greater degree of similarity in the marks is required to support a finding of likelihood of confusion." It noted that PEACH BUNS "is a slang expression suggesting revealing clothing or an attractive body part, while PEACH CLAIRE suggests a particular individual or an individual's name." The Board therefore found that "the differences between the marks as a whole in terms of their meaning and commercial impression are sufficient to outweigh those similarities."

And so the Board dismissed the opposition.

TTABlog comment: Even if Opposer had proven the goods to be related, do you think Applicant still would have won? It seems to me that Opposer would also have to show that its mark is very strong in order to overcome the differences in the marks.

Text Copyright John L. Welch 2010.

TTAB Affirms 2(e)(2) Geographical Descriptiveness Refusal of "US PATIENT REGISTRY" for Medical Information Database

Rejecting Applicant's contention that the term "US" in US PATIENT REGISTRY would be perceived as meaning "we," the Board affirmed a Section 2(e)(2) refusal to register, finding the mark primarily geographically descriptive of Applicant's services: "providing a database of health and medical information" [PATIENT REGISTRY disclaimed]. In re Milwaukee Institute, Inc., Serial No. 77476467 (January 28, 2009) [not precedential].


Applicant maintained that the primary significance of "US" is not geographic. It urged that "US" without periods has a different meaning than U.S.: it connotes 'the objective case of 'we'" and so the mark denotes "a patient registry for all of us."

Examining Attorney Simon Teng submitted dictionary definitions, Internet excerpts, and third-party registrations that convinced the Board that "US" denotes the United States and that "the geographic meaning is its primary meaning."

We acknowledge that "US" also means "we." However, the question of whether the mark's primary significance is a geographic location must be determined not in the abstract but in the context of the mark, in relation to the services with which it is used, and from the perspective of the relevant public for those services.

The Board found that "[t]he relevant public is likely to believe that applicant's database provides access to patient records anywhere in the United States or throughout the United States." [What's the difference? - ed.]

The Board was not persuaded by Applicant's imaginative argument that its database will "provide patients with a community of interest based on common experience/attributes of those suffering from the same disease." According to Applicant, "[a] sense of belonging to this community is a key aspect of what the applicant is intending to accomplish with the use of 'US', the objective case of 'we.'"

The Board, however, found US PATIENT REGISTRY to be "grammatically awkward," and observed that "it would be quite a stretch for the relevant public, such as patients and their doctors, to associate a database for maintaining medical records with a sense of belonging to a community."

As to the association between the place and the services, since the US is neither obscure or remote, a services/place association is presumed from the fact that Applicant's services originate from the place named [Applicant is based in Milwaukee]. Contrary to Applicant's contention, the fact that its server may not be located in the U.S., or that registering patients may reside elsewhere, is not significant.

And so the Board affirmed the refusal.

TTABlog comment: Do you think Applicant's argument about the meaning of US was worth making? In other words, should this have been a WYHA?

Text Copyright John L. Welch 2010.

Thinking About Fraud (Part III): After Bose, Can Fraud Be Cured?

In an apparent attempt to lessen the pain of the TTAB's stringent Medinol doctrine, the Board threw a lifeline to trademark applicants and registrants by developing a (rather clunky) set of decisions that allowed one to "cure" a fraud on the PTO under certain circumstances. But with the stricter fraud standard mandated by the CAFC in Bose, does this line of "cure" cases remain viable? I think not.


In Medinol, Registrant Neuro Vasx filed a motion to amend its registration to remove one of two items (stents and catheters) from its identification of goods because its mark had not been used on stents. The Board found fraud (under the now defunct "knew or should have known" theory), pointing out that even if the amendment were allowed, "the question remains whether or not respondent committed fraud upon the Office in the procurement of its registration." So much for curing fraud after a challenge to a registration.

The Board first suggested the possibility of "curing" fraud in Hurley Int'l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007). There, after commencement of the opposition, the Applicants sought to cure their non-use problem by amending their filing basis to Section 44(e). The Board observed, however, that "the proposed amendment does not serve to cure a fraud that was committed." But in dictum the Board offered a ray of hope to trademark practitioners worried about potential fraud charges: “We note, however, that a misstatement in an application as to the goods or services on which a mark has been used does not rise to the level of fraud where an applicant amends the application prior to publication." [Emphasis added].

The dictum in Hurley was given life in University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) [precedential], wherein the Board ruled that an applicant who corrected a false statement as to use while the subject application was under prosecution enjoyed "a rebuttable presumption that [the applicant] lacked the willful intent to deceive the Office." Judge Walsh, concurring with the majority, would have gone even farther, urging that this corrective action during prosecution negated fraud altogether:

In my view, such corrective action should preclude a fraud claim: (1) because the action effectively negated the intent to establish fraud, and (2) because the allegedly false statement, once deleted, was not material to the Office's later approval of the application.

And in 2009 the Board extended its "cure" jurisprudence beyond the prosecution stage, reaching back to designate as precedential its decision in Zanella Ltd. v. Nordstrom, Inc., 90 USPQ2d 1758 (TTAB 2008). It 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." [Emphasis added].

So, prior to the CAFC's decision in Bose, applicants and registrants who were concerned that an error in an application or registration regarding use of a mark might lead to a fraud claim, were given a way to cure the problem by filing a corrective amendment -- the sooner the better, and hopefully before any challenge arose.

But that "cure" jurisprudence was developed under the Medinol fraud regime, where "knew or should have known" was the relevant standard. Bose requires a much more substantial showing to support a finding of fraud -- just what that standard is remains to be seen. The CAFC in Bose specifically declined to rule on the question of whether proving a reckless disregard for the truth is sufficient to establish fraud (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.

Bose made clear that simple negligence does not suffice for a finding of fraud and that gross negligence is not enough either. So let's suppose that reckless disregard for the truth is the minimum requirement.

Now let's think about curing fraud. If a corrective amendment regarding the use of a mark is made while the application is being prosecuted, how can there be fraud? There has been no reliance on the false statement by the PTO in that the Examining Attorney has not approved the mark for publication. So it seems to me ( as Judge Walsh stated in Universal Games) that there is no fraud because there is no materiality and/or no reliance. [Whether there should be some other consequence for filing a false verification of the application is a different question, not addressed here.]

What about after the application has been approved for publication? Remember we have posited that the false statement regarding use was made with at least a reckless disregard for the truth. Is there any reason why the Board should allow such a false statement to be cured? We are not dealing with the innocent false statement, or even the negligent false statement, or even a grossly negligent false statement. I submit that if fraud has occurred under the heightened post-Bose standard, then there should be no cure. Period.

In sum, I suspect that the TTAB's "cure" jurisprudence has suffered the same fate as the Medinol fraud standard: it's now defunct too.

TTABlog further comment: On the issue of the PTO's reliance on a false statement prior to approval of an application for publication, what about the argument that (at least in some cases) the Examining Attorney conducted a search of the PTO register that would not have been as extensive or time-consuming had the identification of goods been correct in the first place? For example what if the original identification read "chewing gum and nuclear power plants," and the Examining Attorney had expended the time and energy to search for both? Now suppose the Applicant deletes chewing gum? Was the original misstatement material or not? Was there reliance by the PTO, or not?

Text Copyright John L. Welch 2010.

Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents

The TTAB found that BOLLYWOOD is not HOLLYWOOD, and that bought down the curtain on this Applicant's attempt to register the mark THE BOLLYWOOD REPORTER for newspapers and on-line publications in the field of entertainment. The Board held that Applicant could not rely on its previous registrations for THE HOLLYWOOD REPORTER to establish acquired distinctiveness under Rule 2.41(b). In re Nielsen Business Media, Inc., 93 USPQ2d 1545 (TTAB 2010) [precedential].


In response to a Section 2(e)(1) mere descriptiveness refusal of its intent-to-use application, Applicant claimed that the mark THE BOLLYWOOD REPORTER had acquired distinctiveness and was therefore registrable under Section 2(f). It pointed to Rule 2.41(b), which states that "[i]n appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness." In other words, Applicant claimed that it could "tack on" the use of the registered marks to its present mark for purposes of transferring distinctiveness to the new mark.

Examining Attorney Julie A. Watson concluded that the mark THE BOLLYWOOD REPORTER is not the same as or legally equivalent to the mark THE HOLLYWOOD REPORTER. The Board agreed.

To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark.

The Board found that here, the marks are not legal equivalents because they have different meanings and produce different commercial impressions.

“Bollywood” is “the extravagantly theatrical Indian motion picture industry.” “Hollywood” is “the center of the American motion picture industry located in Hollywood, California.” THE BOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the Indian movie industry while THE HOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the American movie industry.

Applicant feebly argued that "there is only one inconsequential difference between the marks": the substitution of a B for an H. Each of the marks refers to a film industry.

Not so fast, said the Board. That one little letter makes a BIG difference in meaning!

And so the Board affirmed the refusal to register.

TTABlog comment: I've never seen a Bollywood movie. Nor have I been to Dollywood. I have been to Hollywood. How about you? If Dolly Parton ever makes a Bollywood movie, I'd go to Hollywood to see it.

That's about the best I can do with regard to commenting on this case, which hardly seems to merit the "precedential" tag.

Text Copyright John L. Welch 2010.

CAFC Hears Argument in "ODOM'S PRIDE" 2(d) Summary Judgment Appeal

The CAFC heard oral argument today (mp3 here) in the appeal from the TTAB's decision in Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., Opposition No. 91182173 (April 17, 2009) [not precedential]. [TTABlogged here]. The Board found the mark shown to the right, for retail grocery store services, not confusingly similar to the six registered marks shown below, for various food items, including sausage, barbequed pork, and various other swine-related products. In its terse six-page opinion, the Board granted the motion for summary judgment, finding that, even considering all other relevant du Pont factors in Opposer Odom's favor, the single factor of the dissimilarity of the marks was dispositive:


The Board said this:

While both parties’ design marks consist of smiling boys wearing hats (and in some instances both waiving [sic!] one hand), this is where the similarities end. Opposer's marks depict a barefoot child holding a fishing pole. The boy is wearing a tall pilgrim hat with a ribbon directly above the brim. The boy's feet are small and narrow. By contrast, applicant’s mark depicts a boy facing forward wearing a short, wide brimmed cowboy hat. This boy is wearing thick boots, has thick hands, and has a piece of straw in his mouth. The boy depicted in opposer’s marks has nothing in his mouth. These visual distinctions are sufficient to create different commercial impressions of the marks, thereby precluding a finding of likelihood of confusion.

Appellant argued that the Board's side-by-side comparison and dissection of the marks was not the proper way to assess their similarities. Appellee argued that Appellant was trying to rely on common law uses of its marks that were not pled in the notice of opposition.

Text Copyright John L. Welch 2009.

TTAB Posts February 2010 Hearing Schedule

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


February 3, 2010 - 2 PM: United Industries Corporation d/b/a Spectrum Brands v. OMS Investments, Inc., Opposition No. 91158240 [Opposition to registration of ANT-STOP for "pesticides for domestic use," on the grounds of abandonment and likelihood of confusion with an alleged family of "STOP" marks for lawn and garden products].


February 4, 2010 - 10:00 AM: In re United Pan Am Financial Corp. Serial No. 77262107 [Section 2(d) refusal to register the mark UNITED AUTO CREDIT CORPORATION for "loan financing services" ["AUTO CREDIT CORPORATION" disclaimed] in view of the registered mark UNITED AUTO (Stylized) for automobile dealerships and financing of automobiles].


February 4, 2010 - 10:30 AM: In re Madmann Trademark Holding Company, Ltd, Serial No. 77228194 [Section 2(d) refusal of MAVERICK for hotel and bar services in view of the identical mark for "restaurant services; contract food services"].


February 9, 2010 - 10 AM: Taiwan Semiconductor Manufacturing Co., Ltd. v. Semiconductor Manufacturing International (Shanghai) Corporation, Oppositions Nos. 91171146 and 91171147 [Section 2(d) oppositions to registration of the mark SMIC & Design for semiconductors, integrated circuits, and parts and packaging therefor,and for custom manufacture and design thereof, in view of the registered mark TSMC & Design] for semiconductors and integrated circuits and their custom manufacture and design].


February 9, 2010 - 11 AM: In re Robbie H. Phillips, Serial No. 77277484 [Section 2(d) refusal of the mark SIREN for pre-recorded music and for live performances by a single death metal rock group, in view of the registered mark SIREN MUSIC FESTIVAL for "entertainment, namely, live music concerts"].


February 17, 2010 - 11 AM: Coach Services, Inc. v. Triumph Learning LLC, Opposition No. 91170112 [Opposition to registration of the marks COACH and COACH AMERICA'S BEST FOR STUDENT SUCCESS & Design for various educational materials on the grounds of mere descriptiveness and of likelihood of confusion with and dilution of the mark COACH registered for leather goods and various other products].


February 25, 2010 - 11 AM: Mag Instrument, Inc. v. The Brinkmann Corporation, Oppositions Nos 91163534, 91164169, and 91164340 [Three consolidated oppositions: (1) Mag's section 2(d) opposition to MAGNUM MAXFIRE for "Hand-held portable lights, namely flashlights and spotlights" in view of the registered mark MAG-NUM STAR and an alleged family of MAG marks for flashlights: (2) Brinkmann's opposition to registration of the design mark shown below, consisting of "two bands that encircle the flashlight," for flashlights, on the ground of functionality; and (3) Brinkmann's Section 2(d) opposition to registration of the mark MAG STAR for flashlights and flashlight accessories in view of the registered mark MAXSTAR for "electric lanterns"].


Text Copyright John L. Welch 2010.