"GREEN CEMENT" Merely Descriptive of Environmentally-Friendly Cement Products, Says TTAB, Concretely

Observing that the the term "green" is "ubiquitously used as an adjective" to denote that a good or service is environmentally friendly, the Board affirmed a Section 2(e)(1) refusal to register the mark GREEN CEMENT, finding it to be merely descriptive of cement and cement-related products. In re Calera Corporation, Serial No. 77409087 (March 24, 2010) [not precedential].


Examining Attorney Frank J. Latucca argued that "[applicant’s] goods are ... specifically made in a way that is more environmentally friendly than normal. ...[a]s such, the mark as a whole is clearly descriptive of the applicant’s goods-namely environmentally friendly cement." He pointed to Applicant Calera Corporation's response confirming that its goods are "produced using processes that emit low level carbon dioxide by-products as compared to standard processes" and "will be made in a way that reduces their carbon footprint."

The Examining Attorney also submitted dictionary definitions of "green" [environmentally sound or beneficial] and "cement" [stuff mixed with water to form concrete], as well as webpages using the term "green cement" descriptively [if not generically]. And he provided several third-party registrations with the word "green" disclaimed or with a 2(f) claim.

Not surprisingly, the Board found that the Examining Attorney had made a prima facie case under Section 2(e)(1).

[W]hen the individual components are combined as GREEN CEMENT there is nothing unique or incongruous about the combination such that it is not merely descriptive. A cement that is made in a way to reduce its carbon footprint, a significant breakthrough, is environmentally beneficial, i.e., green. *** Nothing is left to the imagination that the term GREEN CEMENT is referring to environmentally-beneficial cement.

As usual, this Applicant argued that some degree of thought and imagination would be required to make a connection between the mark and the goods.

The leap from (a) a unique phrase involving a combination of the ambiguous term 'CEMENT' and the slang term 'GREEN' to (b) highly specialized mortar aggregates (and the unique technological process by which [a]pplicant produces them) is certainly not an automatic one, and requires imagination, thought and perception to bridge the gap.

Not so, said the Board: there is nothing ambiguous about the word "cement" and no "imagination or thought" is needed to recognize that "green" describes a significant feature of the goods.

Finally, Applicant tried the ever-popular, always futile argument that consumers the term GREEN CEMENT would not be sure of what it refers to: it could be "1) freshly and not completely hardened; 2) green in color; e) newly manufactured or poured; 4) covered in foliage; or 5) environmentally beneficial." [How about 6) envious; 7) nauseous ? - ed.]

The Board pooh-poohed that argument: it is constrained to make its analysis within the context of the identified goods, not with its eyes closed.

Finally, the Board noted the standard doctrine that even if Applicant is the first and only user of the term GREEN CEMENT, the term is still descriptive of the goods.

And so the Board affirmed the refusal to register.

TTABlog comment: What if Applicant's cement were colored green? Do two "violations" of the Section 2(e)(1) mere descriptiveness ban cancel each other out?

What do you think of the Board's ruling in January 2007 that GREEN BRANCH is not merely descriptive for banking services? [TTABlogged here]. I picked that decision as one of the ten worst of the year.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Are "THE CLOSET GUY" and "THE CLOSET LADY" Confusingly Similar for Closet-Related Services?

In this appeal from a Section 2(d) refusal to register the mark THE CLOSET GUY in the design form shown below, for "installation of custom closets and storage systems" and "custom manufacture of closets and storage systems," the Board's decision turned on the similarity of the applied-for mark to the registered mark THE CLOSET LADY for "consulting and design services for others in the field of storage units and closets.” What would you decide and how would you reach that decision? In re The Closet Guy, Inc., Serial No. 77426306 (March 25, 2010) [not precedential].


In its brief, Applicant discussed only one du Pont factor, namely, the dissimilarity of the marks. Not surprisingly, the Board found Applicant's services to be closely related to the goods and services of the cited registration.

Turning to the marks, Applicant "acknowledged that, as a general rule, when a mark consists of words and a design, it is the word portion that is accorded greater weight in the likelihood of confusion analysis because it would be used by purchasers to refer to or request the goods or services." Here, however, according to Applicant, the design is so prominent that it should be given greater weight. The Board disagreed.

Although the design is certainly visually prominent, it is a picture of a man building a closet, and therefore it merely reinforces the meaning of the word portion of the mark, THE CLOSET GUY. As such, it does not serve to distinguish applicant’s mark from the registrant's.

Applicant asserted that "no one is entitled to exclusive rights to the words THE and CLOSET [in fact, CLOSET was disclaimed in each mark], and that GUY and LADY are sufficiently different to avoid confusion. But the Board found that the marks as a whole are similar in meaning and commercial impression "in that they convey the idea of a person who is creating closets for customers."

The difference in the gender of the person conveyed by the word GUY and LADY in the respective marks is not sufficient to distinguish them, as the overall impression is that of a person who helps the customer and performs the service for them.

The Board noted that marks are not to be compared side-by-side, since "an average purchaser does not retain all the details of a mark, but rather the mental impression the mark creates in its totality."

Because the word portion of applicant’s mark follows the same format as the registered mark, i.e., the phrase THE CLOSET followed by and ending with a word identifying a person by gender, such that the overall meaning is that of a person who designs or creates closets; because the design element in applicant’s mark merely reinforces this meaning; and because the marks as a whole create the same commercial impression; we find that the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion.

Finally, the Board pointed out that any doubt regarding likelihood of confusion must be resolved in favor of the registrant.

TTABlog comment: How did you do? Easy, wasn't it?

Text Copyright John L. Welch 2010.

Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Granting Opposer's motion for summary judgment, the Board sustained an opposition to registration of the mark HERE'S JOHNNY for portable toilets, on two grounds: Number 1 - res judicata, and Number 2 - lack of bona fide intent. The Board ruled that Opposer, as assignee of the right of publicity of the late entertainer, Johnny Carson, has standing to oppose; that previous court and TTAB rulings applied because the Opposer and Applicant here are "legally equivalent" to the parties in those prior proceedings; and that, because a permanent injunction prevents Applicant from using the applied-for mark, Applicant cannot have the requisite bona fide intent since its use of the mark would be unlawful. The John W. Carson Foundation v. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010) [precedential].


Res Judicata: The key issue was whether the earlier court rulings applied in favor of this particular Opposer and against this particular Applicant. The Board found that Mr. Carson's right of publicity survived his death and was properly assigned to the current Opposer. As to Applicant, its current president and sole owner, Mr. Braxton, was also the president and sole owner of the defendant corporation in the prior civil action and Board proceeding. Therefore, "privity exists ... for res judicata purposes." [And they both made privies! - ed.].

Lack of bona fide intent: Applicant contended that the permanent injunction previously issued did not apply to it, but the Board disagreed. As an officer and sole owner of the prior defendant, Braxton was "at a minimum, in active concert and participation with the party bound by the permanent injunction," and he is therefore bound by it under FRCP 65(d)(2).

Mr. Braxton cannot avoid the permanent injunction against him by merely forming another corporation of which he is the sole owner. Indeed, insofar as Mr. Braxton is bound by the permanent injunction individually, he cannot circumvent the injunction by acting through the applicant herein, which he also controls. In view thereof, we find that there is no genuine issue that the permanent injunction applies to applicant.

Because the injunction enjoins Applicant from using the applied-for mark, Applicant cannot make lawful use of the mark, and therefore it is legally impossible for Applicant to have a bona fide intent to use the mark in commerce.

TTABlog comment: Apparently with the death of Johnny Carson and the expiration of his federal registrations for HERE'S JOHNNY, this Applicant thought the door was open, so to speak, to grab this mark.

Text Copyright John L. Welch 2010.

Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB

In this case of first impression, the Board ruled that a foreign trademark owner who has filed an ITU application may rely on the fame of its mark in the United States to support a dilution claim in an opposition. In other words, although the TTAB does not recognize the "well known mark" or "famous foreign mark" doctrine as a basis for preventing registration by another, the fame of the foreign mark in this country may support a dilution claim, provided that the owner has filed an ITU application for the mark. Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential].


Opposer filed an opposition to registration of the mark PANDA for automobiles, asserting lack of bona fide intent to use the mark, and dilution of Fiat's "internationally famous" marks FIAT PANDA and PANDA. Applicant moved to dismiss for failure to state a claim upon which relief can be granted, asserting that Fiat "has no reasonable basis for damage in the absence of an allegation of 'continuing prior use of any form of 'Panda' in the United States.'"

The Board found that Fiat has standing to bring the opposition because it owns an US intent-to-use application for FIAT PANDA that has been provisionally refused based on prior pending applications, including the application here opposed.

The Board found the lack-of-bona-fide intent claim to be properly pled. The real question was whether the dilution claim could survive in light of Fiat's lack of use in the United States.

The Board turned to the requirements of the Trademark Dilution Revision Act (Section 43(c)), which affords certain relief to the "owner of a famous mark." The Act does not define the term "mark," and so the Board looked to Section 45 of the Trademark Act for its meaning.

Utilizing the statutory definition of “mark” to infuse our understanding of “famous mark” as referenced in the TDRA leaves no doubt that any reference in that act to a “famous mark” is a reference to a mark in use in the United States, or for which there is an intent to use the mark in the United States coupled with an application for registration.

The Board concluded that it must "at least recognize the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States."

Therefore, while Section 43(c) provides a dilution cause of action for the protection of famous unregistered marks, it does not provide a cause of action for famous unregistered marks not in use, in some way, in the United States, in the absence of a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products or services are not available in the United States.

The Board then ruled that Fiat had not properly pleaded a dilution claim because it did not allege "any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States." Fiat was given thirty days to replead its dilution claim.

Text Copyright John L. Welch 2010.

Will the TTAB Follow the 4th Circuit's Rosenruist Ruling?

In a controversial decision issued in December 2007, the U.S. Court of Appeals for the Fourth Circuit in Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 85 USPQ2d 1385 (4th Cir. 2007), cert. denied, ___ U.S. ___ (May 27, 2008), ruled that a foreign corporation must obey a subpoena issued by the U.S. District Court for the Eastern District of Virginia, pursuant to a Rule 30(b)(6) notice in a TTAB proceeding, and must appear in Virginia to give trial testimony. [TTABlogged here]. At the time, we wondered whether the TTAB would follow Rosenruist. A recent ruling (here) on a Motion to Quash a discovery deposition suggests that the answer is no. Oxford Tutoring Inc. v. Oxford Learning Centres,Inc., Cancellation No. 92048444.


On March 22, 2010, Interlocutory Attorney Robert H. Coggins granted a motion to quash a Rule 30(b)(6) deposition notice served by Petitioner Oxford Tutoring on Respondent Oxford Learning, a Canadian corporation. Respondent successfully moved to quash the deposition notice of deposition and sought to proceed with any discovery deposition of respondent by the manner prescribed by Trademark Rule 2.124 (depositions on written questions).

Ordinarily, the discovery deposition of a natural person who resides in a foreign country, and who is a person designated under Fed. R. Civ. P. 30(b)(6) or 31(a)(3) to testify on behalf of a party, must, if taken in a foreign country, be taken upon written questions in the manner described in Trademark Rule 2.124. Moreover, the Board will not order a natural person, including a person designated under Fed. R. Civ. P. 30(b)(6), residing in a foreign country to come to the United States for the taking of his or her discovery deposition. TBMP §520 (2d ed. rev. 2004). See Jain v. Ramparts Inc., 49 USPQ2d 1429, 1431 (TTAB 1998), and Rhone-Poulenc Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978). See also TBMP §§ 404.03(b) and 521.

Inasmuch as respondent is a Canadian corporation with no corporate presence in the United States, and no officer, director, managing agent, or other person who consents to testify on its behalf residing in the United States, respondent's motion was granted. Accordingly, petitioner's notice of an oral deposition of respondent was quashed.

The parties fully briefed the issue of the applicability of Rosenruist, with Respondent pointing out in its reply that a decision by the 4th Circuit is not binding upon the TTAB. Perhaps that argument carried the day, because in granting the motion, the Interlocutory Attorney made no mention of Rosenruist.

I suspect that the Board will essentially continue to ignore Rosenruist and will not change its position on this issue until directed to do so by the CAFC.

TTABlog note: In a subsequent order in the Rosenruist opposition,stating that the Board was bound by the district court's order that the deposition proceed, the Board made this comment in a footnote:

The Board has read the opinion of the Fourth Circuit and comments that it is somewhat puzzled by the Court’s characterization of the deposition sought as a “30(b)(6) deposition.” The Board presumes the Court’s reference to 30(b)(6) to be comparative because a 30(b)(6) deposition is a discovery deposition. The Board was always cognizant that opposer was seeking a testimonial deposition of a non-willing, adverse party residing in a foreign country. The Board never referred to the deposition sought as “30(b)(6),” which is not available for trial depositions.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname?

In this appeal from a Section 2(e)(4) refusal to register the mark VALVERDE for "“mineral and aerated waters; non-alcoholic drinks, namely, soda pops, fruit juices and fruit drinks; syrups for making beverages," the Board applied its standard In re Benthin surname test. It turned out that the deciding factor was whether the mark has the look and sound of a surname. How would you decide? In re Spumador S.P.A., Serial No. 79056027 (March 11, 2010) [not precedential].

Jose Valverde
The Examining Attorney submitted evidence that Valverde has no meaning other than as a surname: it is not listed in certain Italian and Portuguese dictionaries, several persons named Valverde can be found on the Internet, and a Wikipedia entry identifies Valverde as a surname. He also found 1859 entries for the surname in a LexisNexis surname search.

Applicant submitted evidence that a Civil War battle was fought at Valverde, New Mexico, that the surname ranks 6141 in frequency of use, that there are geographic locations in Italy, Portugal, Spain, and the Dominican Republic called Valverde, and that the word means "green valley" in Italian, Portuguese, and Spanish.

The Board first concluded that Valverde is "not a rare surname." It then noted that no one associated with Applicant has that name (a neutral factor).

As to the meaning of the word, the Board "could not find the word 'Valverde' in an Italian, Spanish or Portuguese dictionary," but it did find the word in the Dictionary of American Family Names. There was no evidence of significant consumer recognition of the Civil War battle, nor any such evidence regarding the foreign geographic locations. And so the Board concluded that the evidence that Valverde "as a surname" outweighed the evidence that it was not.

The Board then turned to the fourth factor, whether the mark has the "look and sound" of a surname. Applicant argued that Valverde "looks and sounds like a foreign (or unusual) word rather than like a surname." The Board agreed.

In this regard, there is no evidence that "____verde" or "Val____" is a common or recognized structure for a surname (e.g., ___berg as in Steinberg, ___man as in Bergsman, ___lov as in Orlov, etc.). There is also no evidence that any individuals with the "Valverde" surname are notable to consumers in the United States.

And so the Board reversed the refusal.

TTABlog comments: Well, how did you do?

Note the use of the term "soda pops" in the identification of goods. How did this Italian applicant come to use that term? In Boston, some people would use the term "tonic." I grew up in Chicago, where we called it "pop." I would have expected to see the term "soft drink beverages," or something like that, in a trademark application.

Text Copyright John L. Welch 2010.

"E-BANDAGE" and "ELECTRONIC BANDAGE" Merely Descriptive of Bandages, Says TTAB, Unshockingly

The Board sustained a Section 2(e)(1) opposition to registration of the marks E-BANDAGE and ELECTRONIC BANDAGE, finding the marks to be merely descriptive of topical bandages having a "generator built in which uses a current derived from a battery or other power source to drive a current or material from the contact pad of the bandage into the skin." Johnson & Johnson v. Klearsen Corp., Oppositions Nos. 91173864 and 91173865 (March 5, 2010) [not precedential].


Opposer J&J established its standing to oppose on the ground that it is a competitor in the field of bandages and wound care, that the goods of the Applicant are within the normal expansion of its business, and that J&J "may seek to make descriptive or generic use" of the terms. "The rationale is that a competitor should be free from harassment based on the presumed exclusive right which registration of a [merely descriptive] term would erroneously accord."

Opposer’s claim of genericness was not ripe for adjudication because the involved applications were based on intent-to-use and are not eligible for registration on the Supplemental Register or under the provisions of Section 2(f). [In other words, mere descriptiveness alone would doom these applications].

J&J provided various newswire stories using the term ELECTRONIC BANDAGE to describe wound care dressings. The Board concluded that the term "merely describes dressings that utilize a weak electrical current to drive medications from the bandage into the skin to facilitate the treatment of wounds."

As to E-BANDAGE, the Board took judicial notice that the prefix E is defined as being a shorthand for ELECTRONIC. Therefore the evidence regarding ELECTRONIC BANDAGE supports a finding that E-BANDAGE is likewise merely descriptive.

And so the Board sustained the opposition.

TTABlog comment: One might wonder how these marks got passed on to publication.

Text Copyright John L. Welch 2010.

CAFC Affirms TTAB Summary Judgment in 2(d) Farm Boy Design Dispute

In a precedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision granting summary judgment 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 had found Applicant FF's 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. Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., 93 USPQ2d 2030 (Fed. Cir. 2010). [mp3 of oral argument here].


The court agreed with the Board that "even if all other relevant DuPont factors were considered in Odom’s favor, ... the dissimilarity of the marks was a sufficient basis to conclude that no confusion was likely." It rejected Odom's argument that the Board had improperly dissected the marks in its Section 2(d) analysis, and it agreed with FF that Odom could not rely on its unpleaded common law marks to show likelihood of confusion.

TTABlog observation: The Board used the spelling duPont, while the CAFC used DuPont. I prefer du Pont [with a space]. Which is correct?

Text Copyright John L. Welch 2010.

TTAB Reverses 2(d) Refusal of "FLEXILOGIC" for Noise Reduction Software over Same Mark for Software Design Services

Despite the identity of the marks, the Board reversed a Section 2(d) refusal to register FLEXILOGIC for "computer hardware and software for noise reduction, spatial and strength processing, temporal tracking and gesture recognition of touch devices," finding it not likely to cause confusion with the same mark for "computer software design for others." The Board found no evidence that the goods and services are related or move through the same channels of trade, and it concluded that, on their faces, Applicant's goods are sold to "sophisticated purchasers who would exercise great care." In re STMicroelectronics NV, Serial No. 77500550 (March 10, 2010) [not precedential].


The Examining Attorney contended that registrant's design services could include design in the field of noise reduction, etc. Applicant urged that "its complex components deliver specific performance features to touch input electronic devices" such as PDA's and mobile phones.

The Board pointed out that there is no per se rule that every computer program is related to all software design services. The Examining Attorney relied on 16 third-party registrations, but they had no probative value because none listed high-tech components like Applicant's.

The fact that a single source might offer certain specialized types of software alongside software design services targeted to the design of those same specialized types of software does not support the Trademark Examining Attorney’s contention that applicant's specialized software is related to software design services generally. [emphasis in original].

Likewise, the Board cannot presume that Applicant's software would travel in the same channels of trade as Registrant's services, or to the same classes of consumers.

Finally, as to sophistication, even without any evidence from Applicant the Board concluded that Applicant's goods have a niche market, and that "manufacturers of touch input electronic devices (PDA’s and smartphones) will consummate a purchase of
applicant’s type of components only after the exercise of great care."

Consequently, the Board reversed the refusal to register.

TTABlog comment: The cited registration issued in 2003. One would have thought that, at that time, the Examining Attorney might have required more specificity in the recitation of services.

Text Copyright John L. Welch 2010.

TTABlog News Flash: President Obama Signs Trademark Technical and Conforming Amendment Act of 2010

On March 17, President Obama signed into law the Trademark Technical and Conforming Amendment Act of 2010. Among other things, the law fixes an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection). [See this TTABlog posting].

Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Petitioner North Face Apparel fell victim to Respondent Gerald L. Baranzyk's rope-a-dope approach to this cancellation proceeding involving the design mark shown below for "clothing, namely caps, shirts and jackets." Face alleged abandonment and fraud, but failed to prove either. Respondent did not file a brief, failed to get any evidence into the record, and did not answer Face's admission requests, which were thereby deemed admitted. But he still won. The North Face Apparel Corp. v. Gerald L. Baranzyk, Cancellation No. 92046488 (March 10, 2010) [not precedential].


Abandonment: North Face attempted to prove abandonment via the testimony of three investigators who swore they could not find Baranzyk's goods. However, one had looked in retail outlets, even though Baranzyk had stated in an interrogatory answer that he sold his goods by "mail, phone." The other two investigators perused online websites, but Baranzyk answered "no" to an interrogatory asking whether he promoted his goods online.

But it turns out that all this was unimportant anyway, since Baranzyk had admitted (by his failure to respond to the admission requests) that he "does not use his mark on shirts, jackets and caps." That admission request was dated May 6, 2007, and the Board treated that admission as effective through July 10, 2009, "the last day of Respondent's testimony period and therefore the last point at which respondent could have controverted that admission."

Fortunately for North Face, that covered the period when the investigators had been on the prowl, but, unfortunately for North Face, the admitted period of non-use was less than three years, and Face could not therefore rely on the three-year statutory presumption of abandonment.

North Face had no other evidence of nonuse, and so the Board ruled that it had failed to meet its burden of proof. [The Board noted that had North Face requested the right admissions (e.g., non-use year by year), it could have avoided this problem.]


Fraud: In its petition for cancellation, North Face had used the now-discredited "knew or should have known" language for its fraud claim. In its final brief, it asked the Board to strike the "should have known" part, and the Board did so. Nonetheless, Face did not prove fraud. Baranzyk filed his Section 8 declaration on April 14, 2005, and Face provided no evidence that the mark was not in use with the goods on that date.

So the fraud claim bit the dust as well.

TTABlog comment: This case is like a car wreck. You can't keep yourself from looking. But the Board's willingness to amend Face's fraud claim was interesting. Of course, the amendment allowed the Board to deny the claim substantively.

TTABlog postscript: I don't mean to be too harsh on North Face. The Board seemed to lean over backwards in ignoring Applicant's shortcomings. I'd rather face a law firm or lawyer on the other side any day, than a pro se applicant who does the absolute minimum to keep the case going.

Text Copyright John L. Welch 2010.

"TTAB Comes To Boston" - April 9th at Boston University School of Law

The TTAB will visit Boston on the afternoon of April 9th to hear final argument in Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust, Opposition No. 91150346, as part of a program co-sponsored by the Boston Patent Law Association and Boston University Law School. The hearing will be held in the Stone Moot Court Room at the law school, at 765 Commonwealth Avenue, Boston, MA 02215.


The case involves Shelby's application to register the product configuration mark shown above, for automobiles. Factory Five alleges genericness, abandonment, fraud, failure to function as a mark, and collateral estoppel. Briefs and other pertinent papers may be found here at TTABVUE.


The hearing will be preceded by two presentations: Mark Robins of Nixon & Peabody (Boston) will review recent trademark decisions in the First Circuit, and Acting Chief Judge Gerard F. Rogers will discuss Accelerated Case Resolution (ACR) and TTAB procedural developments.

Following the hearing, yours truly will moderate a panel discussion regarding the Shelby case, the panel consisting of Amy Brosius of Fish & Richardson (Boston), Pamela Chestek of Red Hat, Inc. (Raleigh, NC), and Aaron Silverstein of Saunders & Silverstein (Amesbury). A reception will follow the panel discussion.

The program will run from 1:15 pm to 5:30 pm. Details may be found here. On-line registration is available at that BPLA link, or at the door beginning at 12:30.

The registration fee for BPLA members is $100. For non-members, $120. Students may attend fee of charge, provided they sign up in advance (through me).

.

Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision

You might expect a TTAB battle over the mark COMPUTER GEEKS to include a few glitches, right? Sure enough, the parties to this consolidated opposition/cancellation proceeding staggered to a split decision regarding rights in that mark for various computer-related goods and services. Computer Geeks, Inc. v. Compgeeks.com, Oppositions Nos. 91167886 and 91170726 and Cancellation No. 92046567 (March 4, 2010) [not precedential].


Cancellation dismissed: Plaintiff got off on the wrong foot when the Board jettisoned its petition for cancellation of a registration for the mark COMPGEEKS.COM for on-line computer ordering services and for internet search engines. Plaintiff alleged priority of use but it never alleged likelihood of confusion. Instead, it asserted only that: "Insofar as the subject Reg. No. 2499396 is asserted by the Registrant ... as a defense to the pending Consolidated Opposition, then Petitioner believes it will be damaged by the continued registration of the mark of 2499396." Not good enough, said the Board, agreeing with Defendant's affirmative defense that the petition "failed to state a claim."

Testimony submitted late: Defendant objected that Plaintiff had not submitted its testimonial depositions "in a timely fashion," but the objection was overruled, since "Defendant did not suffer any cognizable prejudice."

Too much confidentiality: The Board was not pleased that a "good portion of the record" was designated as Confidential. "[W]e will not be hamstrung by the parties' designation of testimony and evidence as 'Confidential.'" The Board indicated that it would treat as confidential only that which is "truly confidential and commercially sensitive."

Who has priority? There remained to be decided Plaintiff's two oppositions to registration of COMPUTER GEEKS for computer-related goods and services in classes 9, 35, and 4.2 Plaintiff claimed prior use of that mark for a "wide variety of computer-related goods and services."

Plaintiff's testimony established a first use date of November 28, 1995, but only for "computer services in the nature of diagnostics, consulting, and custom assembly of computers."

Defendant asserted a first use date of April 8, 1995 in one application, and had to prove this date only by a preponderance of the evidence. As to the other application, it asserted a first use date of February 1, 1996, and it was required to prove any earlier date (e.g., earlier than November 28, 1995), by clear and convincing evidence. Defendant failed on both counts due to "the uncertainty of [its] testimony on exact dates, as well as the lack of documentary evidence attesting to the use of the mark in 1995."


Likelihood of confusion: The Board noted that this case was "a bit unusual in that neither party in its brief actually points to evidence or arguments regarding the du Pont factors." Plaintiff argued that it should win because (1) the examining attorney for Plaintiff's application thought there was confusion, and (2) Defendant sent Plaintiff two cease-and-desist letters. Not good enough, said the Board: it is not bound by the decisions of examining attorneys, and cease-and-desist letters are not dispositive on the issue. Likewise, Defendant's reliance on certain comments made by Plaintiff's witness was insufficient because the comments were not dispositive admissions.

The Board then found the marks to be identical, but it weighed in Defendant's favor the lack of actual confusion during the more than 10 years that the parties have co-existed in Southern California.

The Board concluded that confusion is likely between Plaintiff's "computer services in the nature of diagnostics, consulting, and custom assembly of computers" and Defendant's computer consulting services (class 42) and its computer hardware (class 9). However, as to "retail store services" and "on-line retail store services," Plaintiff failed to sustain its burden of proof.

Got that?

Text Copyright John L. Welch 2010.

"PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB

The Board reversed a Section 2(d) refusal to register the mark PAPERCLIP CLUB & Design for "on-line wholesale and retail store services featuring office and home office supplies," finding it not likely to cause confusion with the registered mark PAPERCLIP for "office and residential furniture." In re The Paperclip Club, LLC, Serial No. 77501562 (March 2, 2010) [not precedential].


The Board concluded that the marks are "highly similar," in light of the shared term PAPERCLIP. The word CLUB is descriptive of Applicant's services, since Applicant's website indicates that it operates a membership club. The design portion of the mark simply reinforce the term PAPERCLIP. [I like to reinforce paperclips with STAPLES - ed.].

As to the goods/services, the Examining Attorney pointed to Applicant's website, which shows that Applicant sells furniture, and she argued that office supplies encompass furniture. Applicant contended that consumers of its services and purchasers of office furniture are sophisticated.

The Board found the Examining Attorney's evidence insufficient. There was no evidence that office furniture is "encompassed within office and home office supplies:" i.e., no evidence that "purchasers understand or refer to office furniture such as desks, chairs, and bookcases as office supplies." In fact, Applicant's website has separate categories for furniture and office supplies.

Thus, the principle that confusion is likely to result from the use of the same or similar mark for goods, on the one hand, and for services involving those goods, on the other, is not applicable in this case. Furthermore, the mere fact that office furniture is one of the many products applicant sells is insufficient to show that applicant’s identified services and registrant’s goods are related. There is no evidence that applicant’s services and registrant’s goods are of a type which may emanate from a single source ....

As to Applicant's "sophistication" argument, the Board pointed out that there are no pertinent limitations in the application or cited registration, and therefore the Board must assume that all normal classes of purchasers are involved, including ordinary consumers.

And so, the Board reversed the refusal to register, but pointed out that "on a more complete evidentiary record, it might reach a different conclusion."

TTABlog comment: I wonder why the Board sometimes makes the statement that "on a more complete evidentiary record," it might reach a different result. It certainly is an encouragement for the cited registrant to oppose, isn't it? Or is it intended to teach the Examining Attorney a lesson? Anyway, it seems inappropriate to me.

Text Copyright John L. Welch 2010.

"USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably

The Board affirmed two refusals to register the mark USEFUL NETWORKS in standard character and design form, finding the term to be merely descriptive of computer software for physically locating people and for related software development services, and the logo unregistrable absent a disclaimer of the term. In re Useful Networks, Inc., Serial Nos. 77364008 and 77364155 (March 3, 2010) [not precedential].


Examining Attorney Geoffrey Fosdick maintained that USEFUL NETWORKS immediately "conveys the fact that applicant's software and software consulting 'utilize communication network devices to create useful social networks.'" He relied on dictionary definitions of "useful" and "network " and on excerpts from Applicant's website discussing "social networking,"

Applicant Useful Networks contended that a multiple step reasoning process is needed "to conclude that products bearing this mark are for use in physically locating people." It asserted that the mark suggests only a desirable end result without describing the goods and services themselves. Useful pointed to nine third-party registrations containing the words "use," "user," or "useful" without a disclaimer or a claim of acquired distinctiveness.

The Board found it "clear" that Applicant's software and services create "useful networks (i.e., valuable connections between users and service providers)."

While the term “useful networks” does not in and of itself directly convey that the software applications and services related thereto involve location based
services, it is a laudatory term and merely descriptive of the goods and services because it describes a quality that all networking software and services aspire to achieve (i.e., to make useful connections for its users). In this regard, a laudatory term that describes the merits of the goods and/or services is merely descriptive because it describes the characteristics or quality of the goods in a condensed form.

The Board opined that such "location-based technology increases the usefulness [of] the software applications ... and, therefore, is the epitome of a 'useful network.'" The mark "directly describes the purpose of applicant's goods and services: that is the creation of useful networks of mobile communication device users."

The Board rejected Useful's contention that the combination of the words creates some commercial impression different from the individual works. And, of course, the fact that Useful may be the first and only user of the term does not avoid the mere descriptiveness bar.

And so the Board affirmed the two refusals.

TTABlog comment: Sorry, but I don't buy this one. "Useful networks" just doesn't tell me anything about the goods and services, and I don't see it as all that laudatory. I mean, is that a great selling point? We'll make your network useful? Ho-hum. I would have given Useful the benefit of the doubt on this one.

Text Copyright John L. Welch 2010.

Precedential No. 10: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

An augmented TTAB panel of five judges affirmed (3-2) a Section 2(a) disparagement refusal to register the mark KHORAN for wines, concluding that "Muslims would find the mark KHORAN for wines as disparaging to themselves, their religions and their beliefs." The dissent, however, found significant doubt that the word KHORAN, when used in the context of wine, would be equated with the Islamic holy text. In re Lebanese Arak Corporation, 94 USPQ2d 1215 (TTAB 2010) [precedential].

The panel majority reviewed the "structure and development" of Section 2(a), observing that "the proper ground for refusing marks which would offend the sensibilities of an ethnic or religious group is that the matter is disparaging to the members of that group, rather than the matter is offensive or scandalous." The disparagement bar differs from the "scandalousness provision" of Section 2(a) in that the latter protects the public as a whole and the effect of the mark is judged from a general perspective, whereas for the former there is a particular object of disparagement: e.g., a person, group, set of beliefs, etc.

The determination of disparagement requires the application of a two-part test: (1) what is the likely meaning of the mark, taking into account the nature of the goods and the way the mark is used; and (2) if that meaning refers to identifiable persons, institutions, beliefs, or national symbols, is that meaning disparaging to a substantial composite thereof.

The panel majority found "no real dispute that the Office has met the burden of proving the second part of the test. Specifically, the examining attorney has submitted a significant amount of evidence showing that the Koran is 'the sacred text of Islam, considered by Muslims to contain the revelations of God to Muhammad,' and that Islamic authorities view alcohol as a prohibited substance. Applicant does not dispute that this is the case."

The real disagreement between Applicant and the Examining Attorney, and between the majority and dissent, concerned the likely meaning of KHORAN. The Examining Attorney argued that KHORAN is the phonetic equivalent of Koran, while Applicant asserted that it is an Armenian term with the English translation of "altar."

The majority found that KHORAN "gives the commercial impression that it is the word Koran, and that the public (other than Armenian speakers) in general, and Muslim Americans in particular, would regard the mark as referring to the holy text of Islam." It noted, inter alia, that KHORAN and "Koran" may be pronounced identically, and that there are variations in how "Koran" is spelled, including "Khoran."

The dissent argued that the majority misapplied the disparagement test and it disagreed with the determination of the likely meaning of KHORAN.

Specifically, we dispute the majority’s contention that the determination of “what is the likely meaning of the matter in question” should be made from the perspective of the disparaged group. Rather, we believe the Board must look to the general population of the United States and how they will understand applicant’s mark when it is being used in connection with the identified goods or services, in this case wine.

According to the dissent, the majority's approach "will lead to cases where a proposed mark will be found disparaging despite the fact that most Americans attribute a different and inoffensive meaning to that mark."

Moreover, according to the dissent, the Islamic prohibition on alcoholic beverages "may decrease the likelihood that anyone from the general public, at least those familiar with the prohibition, would understand applicant’s mark as a reference to the Koran" as opposed to a reference to the Armenian word.

In short, the dissent concluded that the first part of the disparagement test had not been met. It had "significant doubt as to whether or not the general public is even likely to equate applicant's mark, when considered in the context of wine, with the Islamic holy text." The dissenters would resolve this doubt in favor of Applicant, bearing in mind that an "opposition or cancellation proceeding ... may be filed where the parties will have an opportunity to fully develop an evidentiary record and argue the issue."

TTABlog comment: When is the last time that the Board rendered a decision with an augmented panel? Why, pray tell, was it augmented here?

In any case, I think that, for the general public, the word KHORAN would bring to mind "Koran," and so the dissent's insistence that the meaning of the term be considered from the perspective of the general public would not have made a difference in the outcome here. The majority made that point.

Text Copyright John L. Welch 2010.

Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071

A party who is dissatisfied with a decision of the TTAB may, of course, appeal to the U.S. Court of Appeals for the Federal Circuit pursuant to 15 USC Sec. 1071(a). That party thereby waives its right to seek review by way of civil action in a federal district court under 1071(b). But the appellee has the right, within 20 days of the notice of appeal, to invoke 1071(b) by giving notice to the USPTO that it wishes to have all further proceedings conducted in a district court. The appellant then has thirty days to commence a civil action. Why, you might ask, would an appellee (who won at the TTAB level) remove the appeal from the CAFC?


That's what happened in Snowizard's appeal from the Board's decision in Southern Snow Manufacturing, Inc. v. Snowizard Holdings, Inc., Cancellation No. 92044522 (December 10, 2009) [not precedential]. [TTABlogged here]. Southern Snow, who successfully cancelled Snowizard's registration for the mark ORCHID CREAM VANILLA on mere descriptiveness grounds, took the case out of the CAFC [notice here].

The petition for cancellation was filed by Southern Snow in 2005. In 2006, Southern Snow commenced a civil action for unfair trade practices in Louisiana state court, but that case was then removed to the federal district court in New Orleans. The federal judge stayed the district court action pending the outcome of the cancellation proceeding. [The opposite of what usually happens].

Mark Edward Andrews, counsel for Southern Snow, reports that the federal judge has agreed that the new complaint to be filed by Snowizard, seeking review of the TTAB judgment, will be consolidated with one of several now-pending lawsuits between the parties. It seems that the Battle of New Orleans involves many flavors of snowballs, not just the ORCHID CREAM VANILLA one.

Text Copyright John L. Welch 2010.

Interesting TTAB Statistics in Report to February TPAC Meeting

Some interesting TTAB statistics were provided at the February 2010 TPAC meeting. (document here). New appeals and oppositions are down, final decisions are down, in first quarter of FY 2010 (Oct. - Dec. 2009): presumably the effect of a struggling economy. TBMP revision under way.

· TTAB Receipts – First Quarter of FY10 compared to FY09

o New Appeals: 832, down 11% from 934 received first quarter FY09
o New Oppositions: 1104, down 25% from 1470 received first quarter FY09
o New Cancellations: 357, almost the same as 355 received first quarter FY09
o Cases maturing for final decision on merits: 131, down 42 % from the 225 maturing in the first quarter of FY09

· Pendency – First Quarter of FY10 compared to FY09

o Final Decisions on Merits: 9.1 weeks (6.3 weeks for first quarter FY09)
o Decisions on Contested Motions: 6.8 weeks (8.25 weeks for first quarter FY09)
o Total number of final decisions on the merits: 82, down 44% from the 147 issued in first quarter FY09 (approximately half of the Board’s ATJs were working on the TBMP revision in the first quarter of FY10)
o Total number of decisions on contested motions: 220, Down 29% from the 312 issued in first quarter FY09 (smaller number of Interlocutory Attorneys than ATJs working on TBMP revision in first quarter of FY10)
o Encouraging decision of motions by telephone: 21%, off slightly from the 24% for all of FY09
o Total pendency of those cases that go all the way to decision by a panel of judges:

• Appeals: 46 weeks on average for first quarter FY10 (up slightly from 44 week figure for all of FY09); median figure of 34 weeks in first quarter the same as for all of FY09
• Trial cases: 165 weeks on average (down significantly from 192 week figure for all of FY09); median down from 150 weeks for all of FY09 to 145 weeks in first quarter FY10
• Approximately 97% of trial cases settle before decision by a panel of judges

· Precedential Decisions: 13; about average for quarter (49 total for all of FY09)

· Accelerated Case Resolution (ACR)

o Description: ACR is a method to expedite decision on the merits; agreement of the parties required
o One case resolved by ACR in first quarter
o Advertising availability of ACR: Q & A format article published in ABA-IP Section publication and posted on TTAB website, focusing on “true ACR” cases and cases involving similar efficiencies, such as stipulations of fact, stipulated introduction of evidence, or stipulated restrictions on discovery or trial; list of case names/numbers illustrating more efficient approaches also published and posted
o Presentation on ACR and other possible efficiencies made to Bar Association for District of Columbia and planned for other forums, including Boston Patent Law Association program and INTA annual meeting

· TTAB Manual of Procedure (TBMP): Revision under way with the participation of:
o 9 administrative trademark judges
o 3 interlocutory attorneys
o 4 paralegals/administrative staff

TTABlog postscript: A reader called me to voice disagreement with this statement in the TTAB report: "Approximately 97% of trial cases settle before decision by a panel of judges." The reader says that it is true that about 3% of cases go to trial, but the other 97% are not all settled. They are disposed of by motion, procedural ruling, withdrawal, etc., and no one really knows how many are actually "settled." Perhaps "resolved" would be a better term to use.
.

TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires

Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in the stylized form shown here, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors." Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential].


Family of Marks: Bridgestone had a third registration (ALENZA), but it failed to get it into evidence because its witness "did not testify as to the current status of the regsitration." [Doh! - ed.] In any case, Bridgestone's claim to ownership of an "-NZA" family of marks got no traction. The Board (after reviewing Bridgestone's advertising) punctured that assertion:

Based on the record before us, opposers have failed to establish that the "NZA" suffix is recognized by the purchasing public as exclusively identifying opposers in connection with tires. Opposers' advertising emphasizes the BRIDGESTONE mark and identifies sub-brands such as POTENZA, TURANZA, DUELER and BLIZZAK. *** By highlighting the BRIDGESTONE mark and using POTENZA and TURANZA with DUELER and/or BLIZZAK with the BRIDGESTONE mark, opposers do not draw attention to the purported "NZA" family.

Since Bridgestone did not establish a family of marks, its 2(d) claim rested solely on the likelihood of confusion between the applied-for mark and the marks POTENZA and TURANZA individually.

Strength of Opposer's Marks: As to the strength of Bridgestone's marks, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark."

Flawed Survey Evidence: The Board then let the air out of Bridgestone's survey evidence, finding "a problem with the survey format that affects its probative value."

[I]n the survey, the respondents were shown TURANZA, POTENZA and DUELER and told that these marks were owned by one company and then asked whether the control marks and MILANZA were associated or affiliated with the owner of the first three marks. By telling the respondents that TURANZA, POTENZA and DUELER were owned by the same company, Guideline planted the seed that the "NZA" suffix was significant and, therefore, it influenced respondents by stating the marks were related and suggesting that one or more of the marks shown later might also be related.

Comparing the Marks: Turning then to the marks themselves, the Board found the dominant portion of each to be the first two syllables. The "ZA" provides an Italian accent. "In considering the marks in their entireties, the final syllable is too insignificant to hold that the marks are similar." Moreover, the meaning and commercial impression of the marks are not similar. POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. And so the Board found the marks not similar in appearance, sound, meaning, and commercial impression. [Query: does TURANZA suggest Turin? - ed.]

Customer Care: Noting that some 45% of consumers purchase replacement tires without regard to brand [I choose by color - ed.], this factor slightly favored opposer.

Balancing all the factors, the Board concluded that the "dissimilarity of the marks simply outweighs the other relevant factors."

TTABlog comment: When Bridgestone's family of marks argument went flat, that seriously undermined the acceptability of its survey. Had their been a family of marks, it seemingly would have been ok to show the two family members together during the survey. But then, had there been a family, would Bridgestone have needed a survey?

Family of Marx
Text Copyright John L. Welch 2010.

Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs

Ruling that "the designation 'company' cannot transform the name of the goods for which registration is sought into a trademark," the TTAB found the term ELECTRIC CANDLE COMPANY to be generic for "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures." In addition to genericness, the Board also found the phrase to be "incapable of identifying source for electric candles" under Section 23 of the Trademark Act. In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential].


Applicant sought registration on the Supplemental Register, having failed to convince Examining Attorney Mark Sparacino that the phrase had acquired distinctiveness under Section 2(f). The Examining Attorney then refused registration on the ground of genericness.

The Examining Attorney relied on excerpts from Applicant's website, on third-party websites, and on dictionary definitions, to show that the term "electric candle" is generic. In fact, "electric candle" is an entry in the Trademark Manual of Acceptable Identifications of Goods and Services. He applied both the Gould (compound word) and the American Fertility (phrase) tests for genericness, arguing that under Gould, "electric candle" is a unitary generic term and the addition of 'company' creates a compound term," and that under American Fertility, the phrase is generic pursuant to In re Cell Therapeutics, 67 USPQ2d 1795 (TTAB 2003) [CELL THERAPEUTICS generic for pharmaceuticals].

Applicant argued that ELECTRIC CANDLE COMPANY is not a compound term, and there are no examples of third-party use of the entire phrase.

The Board observed that the dispute "centers on the effect of the addition of the word 'company' to the term 'electric' and the standard to be applied in analyzing the evidence." Under its reading of the two cases, it found ELECTRIC CANDLE COMPANY to be generic under both Gould and American Fertility. As to Gould:

The record shows that “electric candle” is a unitary generic term. *** The space between the generic terms “electric candle” and “company” does not disqualify this type of proposed mark from the Gould analysis. If anything, the terms appearing as they should in normal usage make it even more common. There is no logical basis upon which to conclude that Gould would have yielded a different result if the mark had been SCREEN WIPE rather than SCREENWIPE. Therefore, the Gould analysis applies under these circumstances.

As for American Fertility:

In American Fertility, the Court of Appeals for the Federal Circuit (Court) determined that the USPTO did not satisfy its “burden of showing that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE is generic as applied to the Society’s’ services, namely, promoting the interests of the reproductive medicine profession.” American Fertility, 51 USPQ2d at 1836. However, we do not believe that American Fertility can be read such that an applicant could take a clearly generic term and add to it a non-source identifying word such as “company” and thereby create a trademark. This is true even in the absence of proof by the examining attorney that others have used “electric candle company.”

Finally, dealing with Applicant's contention that ELECTRIC CANDLE COMPANY is not the term that consumers would use to describe the genus, the Board ruled that "the relevant public would nonetheless understand ELECTRIC CANDLE COMPANY to refer to a company that offers electric candles, and public understanding is critical. 1800Mattress.com, 92 USPQ2d at 1685. It is, therefore, incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles."

As has been found in other cases, marks may not equate to the literal name of the goods or services for which registration is sought, but still be deemed to be “generic" or otherwise incapable of attaining source significance and thus unregistrable, even on the Supplemental register. See In re Boston Beer Co. Ltd. Partnership, 47 USPQ2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (The Best Beer in America, although not the generic name of the goods, is such a commonly used laudatory phrase that it is incapable of registration as a trademark).

And so the Board ruled that ELECTRIC CANDLE COMPANY is both generic and incapable of serving as a source indicator for Applicant's goods.

TTABlog comment: Bravo to the Board for tackling head on the CAFC's goofy dichotomy between compounds words and phrases when it comes to genericness. Let's hope the CAFC sees the (candle)light one of these days and straightens out these two cases.

By the way, the Board took a similar approach in its recent, non-precedential ruling in the JOJOBA BUTTER BEADS case [TTABlogged here].

Text Copyright John L. Welch 2010.

CACF Affirms TTAB Ruling: "X-PIPE" is Generic for Engine Exhausts

In a four-page opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision of March 18, 2009 [TTABlogged here], wherein the Board found the term X-PIPE to be generic for "internal combustion engine exhausts." Monty Allen Campbell v. Bassani Manufacturing, Appeal No. 2009-1534 (March 5, 2010) [not precedential].


Campbell argued that the Board was not permitted to rely on evidence of generic use of the term by competitors, but the court pointed out that the cases say otherwise, and further noted that the Board also relied on sources other than competitor use.

TTABlog comment: The Board had rejected as inadmissible (under TBMP Section 528.05(e))certain documents submitted by Campbell because he did not provide an authenticating affidavit or declaration. After the recent TTAB ruling in Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (February 23, 2009), however, such documents (depending on their nature) may now be admissible as self-authenticating. Should Campbell ask or reconsideration by the court?

Text Copyright John L. Welch 2010.

Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB

Here's a primer on how not to file for summary judgment. Opposer Qualcomm's motion was ill-timed, procedurally deficient, and substantively lacking. As a result, it FLOed right down the TTAB drain. Qualcomm Incorporated v. FLO Corporation, 93 USPQ2d 1768 (TTAB 2010) [precedential].


Bad Timing: Under Rule 2.127(e)(1): "A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board." Qualcomm's motion did not fall within the exception. Applicant Flo pointed out in its opposition brief that Qualcomm did not serve initial disclosures, but Flo did not expressly object on that ground. The Board held that this requirement "cannot be waived." Therefore the Board denied the motion as premature.

Unpleaded grounds: Qualcomm did not plead in its notice of opposition any of the grounds on which it sought summary judgment. For that reason, too, the motion was denied. See FRCP 56(a) and (b) and TBMP Section 528.07(a).

Improper ground for summary judgment: One of Qualcomm's grounds for summary judgment, abandonment, is "not available when the opposed application is based on Section 1(b)." "Use of a mark that is the subject of an application alleging a bona fide intent to use is not required until the application files a statement of use."

Inadequate pleading of fraud: The Board took the opportunity to bash Qualcomm's fraud pleading, finding its allegations "legally insufficient." Qualcomm claimed that Flo "knew or should have known" of Opposer's prior use and registration of its pleaded marks and "therefore could not have formed the requisite good faith belief that [a]pplicant is the owner of the mark sought to be registered, and that no other person, firm, corporation or association has the right to use said mark in commerce."

Not good enough, said the Board. "[A]llegations that a party made material representations of fact that it 'knew or should have known' were false or misleading are insufficient."

Opposer has failed to allege that applicant knew that opposer had rights in the mark superior to applicant's, and either believed that a likelihood of confusion would result from applicant's use of its mark or had no reasonable basis for believing otherwise; and that applicant, in so failing to disclose, intended to procure a registration to which it was not entitled.

And so the Board denied the motion.

TTABlog comment: This business of whether you have to object on the ground that the other side didn't serve initial disclosures is getting a bit tricky, isn't it?

Note also the "no reasonable basis to believe" language. Isn't that like "knew or should have known"? I thought that, under Bose, reasonableness was not part of the equation.

TTABlog further comment: Note that in Boston Red Sox Baseball Club Limited Partnership v. Chaveriat III, 87 USPQ2d 1767 (TTAB 2008) [precedential], the Board held that the parties can stipulate to a waiver of the initial disclosure requirement. And in Amazon Technologies, Inc. v. Jeffrey S. Wax, 93 USPQ2d 1702 (TTAB 2009), the Board held that an objection to discovery on the ground that the other party has not made its initial disclosures must be made specifically.

Text Copyright John L. Welch 2010.

TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs

Two CARMINE'S is/are enough, said the TTAB, in affirming a Section 2(d) refusal to register the mark CARMINE'S in the form shown here, in view of the two registered marks shown below (owned by different entities), all for restaurant services. Applicant Carmine's Broadway Feast, Inc. pointed out that one of those two marks was cited against the other during prosecution but the refusal was withdrawn; however, the Board observed once again that it is not bound by the actions taken by Examining Attorneys in cases not before it. In re Carmine's Broadway Feast Inc., Serial No. 78934642 (February 25, 2010) [not precedential]. [Postscript: This decision was vacated by the Board in an Order dated May 15, 2015 (here) on the ground of mootness].


The Board wasted little time in finding the marks to be "highly similar" since CARMINE's is the dominant element in each mark. The displays of the marks do not alter the marks' similar connotations or commercial impressions.

Applicant argued that CARMINE'S is a given name and therefore the term is entitled to only a narrow scope of protection. The Board noted, however, that "contrary to the implication in applicant's argument," Section 2(e)(4) applies only to surnames, not given names. There is no provision of the Trademark Act that requires different treatment for given names than any other mark.

Applicant maintained that the coexistence of the two cited registrations dictates reversal. Since one of the cited marks issued despite initially being refused registration over the other, Applicant argued that the Board should reverse here to be consistent. No, said the Board. It is required to assess Applicant's mark in light of the record before it, and is not bound by the actions of Examining Attorneys with regard to other applications.

Next, Applicant urged that CARMINE'S is a weak mark in light of use of that name by several third parties. It provided menus from fourteen establishments that use CARMINE or CARMINE'S as their entire name or part of their name. The Board, however, found this evidence unpersuasive.

This is unlike cases where the Board has found a term to be weak because it is highly suggestive or descriptive, as applied to the relevant goods or services, based on evidence of third-party use in the relevant field. Cf. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005). Rather, the record, limited as it is, suggests that numerous parties use these marks in distinct geographical areas. There is no basis for us to conclude that the customers of restaurants would view CARMINE as highly suggestive or descriptive of restaurant services. Quite the contrary -- in each example CARMINE or CARMINE’S appears to be the most distinctive element of the mark.

Finally, Applicant asserted that there have been no incidents of actual confusion between the marks at issue. The Board pointed out, however, that the issue is likelihood of confusion, not actual confusion. Moreover, Applicant itself argued that the three entities operate in different geographical markets. "More importantly, self-serving arguments of no actual confusion have little or no probative value in an ex parte proceeding."

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

TTABlog comment: The first cited CARMINE'S is in Rochester, NY, while the second was in Albany (it is apparently now closed). Do you think there is or was any likelihood of confusion in the real world, as opposed to TTAB-world?

Text Copyright John L. Welch 2010.