The TTABlog<sup>®</sup>: April 2010

Test Your TTAB Judge-Ability on this Rejected Amendment and Specimen of Use

Applicant Marion L. Lonegro sought to amend her application for the standard character mark SENSITIVITY AWARENESS from "fund raising" and "educational seminars" to "publications for charitable fund raising." She submitted the specimen of use depicted immediately, identified as "an image applied by a rubber stamp to the packaging of publications used for fund raising." Was the amendment proper? Was the specimen acceptable? The PTO's Examining Attorney said no, so Ms. Lonegro appealed. What's your decision? In re Marion L. Lonegro, Serial No. 76695362 (April 12, 2010) [not precedential].

The Examining Attorney required clarification of Applicant's services, but instead she sought to amend the application to read "publications for charitable fund raising." The Board observed that an applicant may amend to clarify or limit, but not to broaden, the identification of goods or services. Not surprisingly, it concluded that "publications" did not fall within the services recited and that the refusal of the amendment was proper.

Turning to the proffered specimen of use, the Board noted that for services, there must be a "direct association between that mark ... and the services specified in the application, and there must be sufficient reference to the services in the specimens to create this association."

Not surprisingly, the Board found such required association lacking in Applicant's specimen of use. It noted that the services are not "so unusual that the typical methods of displaying a service mark therefor, e.g., signage or advertisements, would be unavailable."

And so the Board found the specimen inadequate.

TTABlog comment: WYHA? Applicant's attorney here is a frequent "WYHA?" source. True to form, he filed a three-page appeal brief and a two-page reply brief (which amounts to five fewer pages than the decision). Perhaps the PTO should raise the appeal fee?

Text Copyright John L. Welch 2010.

WYHA? TTAB Finds "THE ORIGINAL CHUBBYS MEXICAN FOOD" and "EL CHUBBY'S" Confusingly Similar for Restaurant Services

In a mere seven pages, the TTAB affirmed a Section 2(d) refusal to register the mark THE ORIGINAL CHUBBYS MEXICAN FOOD for bar and restaurant services [THE ORIGINAL and MEXICAN FOOD disclaimed], finding the mark likely to cause confusion with the registered mark EL CHUBBY'S for "restaurant services featuring Mexican food." If you were Applicant's counsel, what argument would you have made to overcome the refusal? In re Chubby’s, Inc., Serial No. 77481121 (April 23, 2010) [not precedential].

Of course, the Board found the involved services to be legally identical, and it presumed that the services are marketed in the same, normal trade channels to the same classes of customers.

Applicant argued that "[t]he consumer who is interested in purchasing Mexican food is sophisticated." [I am and I'm not. - ed.] The Board, however, observed that "restaurant patrons include ordinary consumers exercising only a normal degree of care."

Before turning to the marks, the Board pointed out once again that, because the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board took judicial notice that the word "EL" in the registered mark is the Spanish word for "the" and therefore has no trademark significance. As to Applicant's mark, the word "CHUBBYS" is the dominant portion, since the remaining words are laudatory or descriptive and have been disclaimed.

The Board concluded that "although the marks in their entireties appear and sound different, they have similar connotations and commercial impressions, and their dominant features are the same." Therefore this factor weighed in favor of the refusal.

And so, weighing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog comment: There seem to be quite a number of different "CHUBBY'S" restaurants in Colorado. You may find some discussion of that fact by conducting a GOOGLE brand search for "Chubby's Colorado."

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Are "ARTEHOUSE" and "ART HOUSE GREETINGS" Confusingly Similar for Greeting Cards?

Okay, here's your next assignment. Applicant sought to register the mark ART HOUSE GREETINGS in standard character form, for greeting cards [GREETINGS disclaimed], but the Examining Attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark ARTE HOUSE for "fine art prints, posters, calendars and greeting cards." What's your decision? In re Art House Greetings, Inc., Serial No. 77093040 (April 13, 2010) [not precedential].

Both the application and the cited registration include "greeting cards." The Board presumed that those goods travel in the same channels of trade to the same classes of customers. Greeting cards are relatively inexpensive items that would be purchased with ordinary care. These factors weighed "heavily" in favor of a finding of likelihood of confusion.

Of course, when the goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

The Board found, not surprisingly, that the term ART HOUSE dominates the applied-for mark and is similar to Registrant's entire mark ARTEHOUSE. As to appearance, the Board agreed with Examining Attorney Aisha Clarke that American consumers will not give much significance to the letter "E" in the cited mark, since it appears in the middle of Registrant's mark.

As to sound, the Board observed again that "there is no 'correct' pronunciation of a mark." [What about BLACK CAT for firecrackers? or APPLE for computers? - ed.]. This is particularly true with regard to a "foreign" term like "arte." Applicant contended that consumers will articular the "E" in a sharp, clear fashion, but the Board found it just as likely that American consumers will not pronounce the "E" at all. [Would those who pronounce the "E" say "ARTIE HOUSIE?" - ed.] And even if the "E" were pronounced, the difference in sound between the two marks would be minimal.

The marks convey essentially the same meaning, since the Italian word ARTE translates as "art."

Finally, as to commercial impression, Applicant argued that ARTE HOUSE is an incongruous combination which is distinguishable from the completely English combination ART HOUSE. The Board disagreed, opining that American consumers may not even notice the purported incongruity.

In sum, the differences in the marks are outweighed by the similarities.

Applicant contended that its goods are "directed toward a more sophisticated buyer." [See Applicant's website here]. Even assuming that to be true (and there was no such limitation in Applicant's identification of goods), the Board noted that even careful purchasers are likely to be confused when similar marks are used for identical products.

And so the Board affirmed the refusal to register.

TTABlog comment: If you were about to file the appeal in this case, what percentage would you apply to your chances of success?

Text Copyright John L. Welch 2010.

TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent to Use "FEAR THE FRIARS" for Clothing

Applicant's lack of documentary evidence to support his claim of bona fide intent to use the mark FEAR THE FRIARS for various clothing items, and his inability to point to other evidence that would explain or outweigh his non-documentation, led the Board to grant the summary judgment motion of Opposer Padres, L.P. and to deem the application void ab initio. Padres L.P. v. Rene Galvan Munoz,Opposition No. 91187852 (April 15, 2010) [not precedential].

Opposer Padres asserted that Applicant Munoz's written discovery responses established a prima facie case of lack of bona fide intent, and that Munoz's statements of subjective intention were insufficient to overcome Opposer's case. Munoz claimed that he did not "publish" any of his thoughts regarding his products in order to avoid any trademark infringement actions until he obtained a registration. [How would he get a registration without first using the mark publicly? - ed.]

The Board noted that Munoz has no current business plans, ongoing discussions, or promotional activities, no use of his mark, no licensees, no trademark search results, no website, no designs or logos, no sample products, and no marketing plans. [And no hope here - ed.]

Munoz countered with statements of subjective intent. He stated that he has "made plans on how [he] would proceed if granted the mark, but [has] not put those thoughts down on paper."

The Board ruled that the Padres had made out a prima facie case which, if unrebutted, would suffice to establish lack of bona fide intent. Munoz, however, failed to identify any evidence that might explain or outweigh his lack of documentary evidence or might otherwise establish the requisite intent. Munoz failed to show that he is "in the business of or capable of marketing the clothing identified in his application." His statement regarding his desire to avoid a possible infringement action "does not establish that he had a bona fide intent to use the mark when he filed the application."

And so the Board found that there is no genuine issue of material fact regarding the Padres' bona fide intent claim, and it entered summary judgment against Munoz.

TTABlog comment: It's not often that the San Diego Padres win anything, so let's give them a hand. BTW: Munoz intended to sell his goods to Padres' fans, so if he didn't lose on this ground, he would have lost on the likelihood of confusion ground: the Padres own the registered mark FRIARS.

Text Copyright John L. Welch 2010.

Precedential No. 15: TTAB Affirms Rejection of Website Specimen for Goods, Ordering Information Lacking

Finding Applicant's specimen of use unacceptable, the TTAB affirmed a refusal to register the mark PROVIDING PROTEIN AND MENU SOLUTIONS for "processed meats, beef, pork, poultry and seafood sold in portions; fully cooked entrees consisting primarily of meat beef, pork, poultry or seafood." The Board observed that "[i]f there is no way for a consumer, when visiting a webpage, to order the goods being promoted, then the use of a proposed mark in connection with the goods on the webpage is nothing more than advertising. In re Quantum Foods, Inc., 94 USPQ2d 1375 (TTAB 2010) [precedential].

[Click on photo for larger picture]
Applicant contended that the web page does show ordering information: "If you put the cursor over 'FOR FOODSERVICE,' a drop down menu appears which includes a 'contact us' link. If you click on the 'contact us' link, you are routed to the customer service page which contains an email address and toll free number for contacting applicant's customer service department for, among other thing, placing an order for the goods." Thus, according to Applicant, the website satisfies the requirement for a proper webpage specimen: "(1) a picture of the goods; (2) the mark appears directly above the goods; and (3) a visible weblink to order the goods by clicking on 'For Foodservice.'"

Examining Attorney Justine D. Parker responded that the specimen may show use in connection with a service, for "creating menu solutions," but "it does not show use of the proposed mark in connection with the goods." She argued that "[b]ecause the specimen does not have instructions or information for ordering the goods, consumers will not know that they can contact applicant to order" them.

The Board agreed with the Examining Attorney. Reviewing the pertinent CAFC and TTAB precedents, it found Applicant's webpage to be nothing more than advertising, and advertising is not a proper specimen of use for a trademark.

The problem with applicant’s specimen is that it does not contain any information normally associated with ordering products via the Internet or the telephone as in Sones, Valenite or Dell. For example, there is no sales form, no pricing information, no offers to accept orders, and no special instructions for placing orders anywhere on the specimen. That is, the webpage is simply a way to advertise and inform the public about the company and its goods; the webpage does not show an actual offer for sale of the goods identified in the application and the opportunity and means to complete an on-line purchase of any goods. There is no ordering information and, in point of fact, it is not even clear what goods, if any, can be ordered from applicant.

The fact that customers can move their cursor over "FOR FOODSERVICE" to reach a "contact us" page "does not convert ordinary advertising into a point-of-sale display associated with the goods."

Applicant’s webpage contains no actual information about applicant’s goods and it is not clear how the goods would be ordered through the website, unlike the case with the webpage specimens in Valenite and Dell. Similarly, unlike the specimen in Sones that displayed “shopping cart” functionality for online ordering, applicant’s webpage does not display any capability to buy the goods.

And so, the Board affirmed the refusal.

TTABlog comment: Not much to argue about here. Perhaps Quantum should file a service mark application?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability on This Specimen of Use Question

Applicant sought to register the word marks SEELECT TEA and SEELECT TEA & NUTRITION for dietary supplements and herb teas, but the Examining Attorney refused registration on the ground that the marks, as displayed on the specimen of use, do not function as source indicators. On the specimen packaging (see below) the marks appear only just above the bar code in the form: "SEELECT TEA™ and SEELECT TEA & NUTRITION™ are trademarks of Seelect, Inc." The question for you: is that a proper trademark use of the applied-for marks? In re Seelect, Inc., Serial Nos. 76671619 and 76671623 (April 7, 2010) [not precedential].

The Examining Attorney pointed out that the marks appear on the bottom of the packaging in a small font. The average consumer would perceive Applicant's mark to be the stylized "SEELECT" mark that appears on the top of the packaging (and which is a registered trademark), and he or she would see the statement regarding the applied-for marks as being merely informational.

Applicant contended that it complied with the statutory requirement that the trademark be used on the goods by placing it in "any manner" on the goods or their containers. (See Section 45 of the Trademark Act). Here, the marks are "clearly designated as trademarks" and are "accompanied by a statement to that effect."

The Board acknowledged that this is a close case. It pointed out that not everything a party adopts and intends to use as a mark "achieves this goal." Moreover, use of the "TM" designation does not make unregistrable matter registrable. But the Board sided with Applicant:

[W]e find that applicant’s use of SEELECT TEA and SEELECT TEA & NUTRITION, as shown on applicant’s packaging, is minimally technically sufficient to establish that they function as trademarks. Given the prominent use of SEELECT on the packaging for applicant’s tea, and the fact that the word “tea” is used in both applied-for marks, consumers are likely to perceive SEELECT TEA and SEELECT TEA & NUTRITION appearing elsewhere on the same packaging as trademarks for applicant’s tea.

The Board agreed that Applicant's display of the marks was not the "ideal way to indicate the source of the goods to the consumer," and in other circumstances such a display might not be enough because consumers would not notice the mark. Here, however, in view of Applicant's prominent use of the registered mark SEELECT on the same packaging, the two marks function as trademarks.

TTABlog note: Well, how did you do? Do you agree with the result? I don't.

Text Copyright John L. Welch 2010.

Precedential No. 14: Noncommercial Use Defense to a Dilution Claim Unavailable in a TTAB Proceeding

The parties filed cross-motions for summary judgment in this consolidated opposition to registration of two marks -- GRAND AMERICAN EXPRESS and the mark shown below -- for "transportation services, namely, transporting passengers by means of a 19th century replica train." American Express claimed likelihood of confusion with and likely dilution of its family of AMERICAN EXPRESS marks. Applicant Gilad moved to add the affirmative defense of "noncommercial use" with regard to the dilution claim, but not until after moving for summary judgment on that issue. American Express Marketing & Development Corp. v. Gilad Development Corporation, 94 USPQ2d 1294 (TTAB 2010) [precedential].

Timing of Applicant's Motion: American Express complained that Gilad's summary judgment motion was improper because it was based on a then unpleaded defense. The Board noted that a party may simultaneously move to add an issue and move for summary judgment on that issue. However, in this case, in the interest of judicial economy, it decided to first hear the motion for leave and then the summary judgment motion. In the future, however, the Board will deny such a summary judgment motion unless it is "accompanied by an appropriate motion to amend or is withdrawn and refiled with such a motion to amend."

Commercial Use Defense: Applicant contended that it chose its marks as an allusion to an 1855 lithograph by Currier and Ives titled American "Express" Train and the nineteenth century history and era it evokes. Therefore, Applicant argued that its marks, "in addition to their intended service mark usage, serve as a form of artistic expression."

The Board first considered whether to grant Applicant's motion to amend, and found the only significant question to be whether the amendment would be futile.

Applicant Gilad urged that the Trademark Dilution Revision Act of 2006 (TDRA) expressly includes "noncommercial use" as a defense to a dilution claim. Opposer maintained that the defense is unavailable in a Board proceeding, where only registrability is at issue and not whether Applicant has the right to use its mark. Gilad countered by arguing that there is no reason why use of a mark cannot be both "use in commerce" for purposes of registrability and "noncommercial" for dilution purposes.

The Board observed that "the applicability of the 'noncommercial use' exception as an affirmative defense to a dilution claim is an issue of first impression for the Board." It concluded that the defense is not available.

First, the Board reasoned, the definition of "service mark" precludes the applicability of the "noncommercial use" defense in a Board proceeding. In order to obtain registrations, Applicant Gilad is required to demonstrate use of its marks in commerce as service marks, and thus cannot claim that the use is noncommercial.

Second, the Board agreed with Professor McCarthy that the mere use of another's famous mark as a mark for its own goods or services, whether commercial or not, disqualifies it from invoking the "noncommercial use" exception.

Moreover, even if the "noncommercial use" exception did apply here, Applicant's use or intended use of its marks would not qualify as noncommercial. "'Noncommercial use' has been referred to as constitutionally protected speech that consists of parody, satire, editorial and other forms of expression that are not part of a commercial transaction." Applicant's use does not fall into any of those categories.

And so the Board denied Applicant's motion for leave to amend on the ground that the amendment would be futile.

Opposer's Summary Judgment Motion: The Board wasted little time in denying American Express's summary judgment motion. As to the Section 2(d) claim, it found that genuine issues of material fact exist as to the similarity between the marks and the relatedness of the goods. As to the dilution claim, disputed factual issues involve "whether the marks evoke similar commercial impressions so that registration of applicant's marks would impair the alleged distinctiveness of opposer's pleaded marks."

TTABlog comment: I think the Board should have granted summary judgment sua sponte against American Express on the dilution issue, because the marks are too dissimilar.

Text Copyright John L. Welch 2010.

TTAB Finds "FULLY COOKED" Generic for ... Guess What?

The TTAB granted a petition for cancellation of a registration for the term FULLY COOKED for "prepared entrees consisting primarily of meat," finding it to be generic. The Board acknowledged that "fully cooked" is not the name of a food product but rather an adjective that "describes a category of processed foods," a designation that should be freely available for use by competitors. Eddy Packing Co., Inc. v. HEB Grocery Company, Cancellation No. 92041545 (April 15, 2010) [not precedential].

The Board found the genus of the goods to be "prepared foods," not just meat entrees, noting that the genus may be broader or narrower than the identification of goods.

The relevant public here comprises "ordinary consumers, institutional purchasers, food retailers and meat companies."

As to the public perception of the term "fully cooked", the Board took judicial notice of several pertinent definitions. It also looked at the way "fully cooked" is used by Respondent, by Petitioner, and by third parties. Petitioner provided numerous Internet documents showing use of "fully cooked" in connection with prepared foods. Six trademark registrations and eleven applications include "fully-cooked" within the identification of goods, and nine registration include disclaimers of "fully cooked." Five utility patents use the term in connection with a type of meat preparation."

The Board concluded that FULLY COOKED "identifies a type or category of prepared foods" and that "the relevant public understands the term 'fully cooked' to refer to that class of products which include 'prepared entrees consisting primarily of meat.'"

The commonly understood meaning of the term "fully cooked," petitioner's uses and third-party uses, all demonstrate that purchasers understand that the term "fully cooked" identifies a category of food processing. However, it is respondent's own use of that term, as well as the testimony of respondent's expert witness, that really cooks respondent's goose. Judith Quick clearly identifies "fully cooked" as a category of processed foods and she testifies that every competitor should be able to use it if it meets the labeling requirements.

And so the Board found the term to be generic, and it granted the petition for cancellation.

TTABlog comment: Highly descriptive? No doubt. Generic? What do you think?

Text Copyright John L. Welch 2010.

Mark Your Calendar for Meet the Bloggers VI

Meet the Bloggers VI, the best non-INTA event during INTA, will happen on Monday night, May 24th, beginning at 8pm at Lucky's Lounge, 355 Congress Street, Boston. Lucky's is just a few blocks from the convention center. Check the map at the website here.

In addition to yours truly, the TTABlogger, the hosts of Meet the Bloggers VI are Marty Schwimmer of the Trademark Blog, Ron Coleman of Likelihood of Confusion, and Pamela Chestek of Property, intangible.

Lucky's is a little difficult to find, since it does not have outdoor signage. [Can not having signage be a trademark?] It's right smack at the corner of Congress Street and A Street. Go down a few steps to the entrance doorway. [See the photo above]. The convention center is a few blocks leftward.
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Precedential No.13: Divided TTAB Panel Dismisses "VIGILANZ" Opposition, Finding Purchasers Sophisticated and Goods Not Related

In a 55-page decision that includes a 12-page dissent, the TTAB dismissed a Section 2(d) opposition to registration of the mark VIGILANZ for "near real-time computer monitoring system comprised of a software application and database that anticipates and detects possible adverse drug events, and alerts healthcare providers to adverse drug events." The majority found that, despite the niche fame of Opposer's registered mark VIGILANCE for "heart monitors" and the similarity between the marks, likelihood of confusion with the registered mark was de minimis in view of the differences in goods, channels of trade, and classes of customers and the sophistication of the purchasers. Edwards Lifesciences Corporation v. VigiLanz Corporation, 94 USPQ2d 1399 (TTAB 2010) [precedential].

The panel was in agreement that Opposer's mark VIGILANCE has achieved niche market fame, based on use of the mark since 1990, sales figures that "appear to be relatively large," and a claimed market share of 75%.

The majority found the involved marks to be "similar." They are similar in appearance and sound and have the same meaning and overall commercial impression.

As to the goods, the majority found that "[d]espite the superficial similarities between the goods," they are very different. Opposer's product is a monitor used in critical care settings to measure cardiac output, whereas Applicant's system comprises software and a database used by hospital pharmacies to analyze patient lab results. Opposer argued that Applicant's identification of goods is not limited to use by pharmacies, but the majority accepted Applicant's extrinsic evidence to "demonstrate the meaning of its description of goods, and not to restrict or limit the goods."

Moreover, the majority found, "the purchasing process is so attenuated and lengthy for both products that there is time for all involved to understand clearly and completely the vendors with whom they are dealing." The majority pointed out that "the mere purchase of goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers." The likelihood of confusion must involve not merely a purchasing institution, but "customers or purchasers."

We are left with a record showing that the same people do not encounter the marks and products; or, if they did, they would do so only in the context of lengthy sales processes leaving no room for misunderstanding about the sources of the respective products.

The majority concluded that the involved products are not related and move in different channels of trade to different classes of consumers.

Weighing the relevant du Pont factors, the majority found the extent of any possible confusion to be de minimis.

In dissent, Judge Ritchie asserted that the majority had not given sufficient weight to the fame of Registrant's mark. Moreover, she would find the marks to be not merely "similar," but "almost entirely identical."

Her key disagreement concerned the relatedness of the goods.

[I]t is error on the part of the majority to give credence to applicant's argument that the market conditions are relevant where applicant seeks an unrestricted registration for its goods. Nowhere does [the application] say that it is limited to use by pharmacists, nor does that limitation ring true.

Judge Ritchie maintained that the Board should take judicial notice that the term "healthcare providers" in Applicant's identification includes physicians and nurses. Moreover, the "health monitors" of Opposer's registration are likewise unrestricted, and could include over-the-counter health monitors sold via prescription by pharmacists.

Judge Ritchie did not contest the finding that the involved goods are purchased with care by sophisticated purchasers, but she noted that sophisticated purchasers are not immune from source confusion when the marks are effectively identical. She would resolve "what little doubt" she had in favor of the prior registrant.

TTABlog note: The posting is, of course, a condensation of this lengthy and thoughtful decision, which merits a full read.

Text Copyright John L. Welch 2010.

CAFC Affirms TTAB's "CRASH DUMMIES" No Abandonment Decision

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's ruling in Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008) [not precedential]. The Board held that Mattel has rebutted the statutory presumption of abandonment of its CRASH DUMMIES mark by showing "reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate." [TTABlogged here]. The CAFC agreed. The Crash Dummy Movie, LLC v. Mattel, Inc., 94 USPQ2d 1315 (Fed. Cir. 2010) [precedential]. [The oral argument may be heard here].

The TTAB found a prima facie case of abandonment of the CRASH DUMMIES marks based on three years of nonuse, beginning at the earliest on December 31, 1995 (when various licenses of the prior owner, Tyco, expired), and ending at Mattel’s actual shipment of CRASH DUMMIES toys in December 2003. [Mattel purchased Tyco in 1997]. However, the burden of persuasion on the issue of abandonment remained on Crash Dummies, LLC.

The CAFC found that "[s]ubstantial evidence supports the Board’s finding that Mattel intended to resume use of the CRASH DUMMIES marks during the contested time period." First, in 1998, it entered into negotiations with KB Toys concerning the latter's becoming the exclusive seller of CRASH DUMMIES toys. Second, "common sense supports the conclusion that Mattel would not have recorded Tyco’s trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future." [Really? - ed.]. Mattel's subsequent failure to file a Section 8 declaration "does not negate Mattel’s intent to resume use of the mark." Third, "Mattel’s research and development efforts from 2000 to 2003 indicate its intent to resume use of the marks." Mattel’s shipment of CRASH DUMMIES toys in December 2003 supported its testimony regarding research and development efforts in the early 2000’s.

Mattel needed sufficient time to research, develop, and market its retooled CRASH DUMMIES toys after acquiring Tyco’s CRASH DUMMIES marks in 1997. Despite Mattel’s delay in utilizing the marks for its toys, substantial evidence supports the Board’s finding that Mattel rebutted the statutory presumption of abandonment of the marks. Accordingly, the Board correctly held that CDM may not register its proposed mark CRASH DUMMIES for a line of games and playthings.

Text Copyright John L. Welch 2010.

WYHA? TTAB Affirms 2(d) Refusal of "USWEAR" for Boys Clothing Over "US WEAR" for Adult's Clothing

Would you have appealed this Section 2(d) refusal to register the mark USWEAR for "clothing for adults, namely, jackets and sweaters, not including boys and girls sportswear?" Examining Attorney Amy Alfieri maintained that the mark is confusingly similar to the registered mark US WEAR for "clothing, namely boys and girls sportswear, namely, pants, jumpers, overalls, coveralls and woven and knit shirts and skirts." In re USCANTEEN, INC., Serial No. 76692826 (April 7, 2010) [not precedential].

The Board needed only five pages to affirm the refusal [equaling Applicant's three-page appeal brief and two-page reply brief]. The identity of the marks weighed heavily in favor of the refusal. As to the goods, Applicant attempted to "make hay" out of the exclusionary language in its identification of goods, but the Board was not persuaded.

Rather, both the items in the application and those in the cited registration fall under the general rubric of “clothing.” Furthermore, the examining attorney has presented evidence to show that it is not unusual for the same mark to be registered for clothing items for both adults and children.

The Board noted that adult and children's clothing are found in the same channels of trade: e.g., The Gap, Filene's, Sears, etc. Adults are often the purchasers of clothing for their children, and nothing more than ordinary care would be employed in the purchasing decision.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.

Real World Aside, TTAB Affirms 2(d) Refusal of "CARRERA" for Welding Helmets

In a decision noteworthy for its display of photoshopping talent, if nothing else, the Board affirmed a Section 2(d) refusal to register the mark CARRERA for "welding helmets," finding the mark likely to cause confusion with the identical mark, registered for "protective helmets." Applicant made the futile argument that the registrant sells only cycling helmets under its mark, but the Board pointed out for the millionth time that the determination of likelihood of confusion must be made in light of the goods identified in the cited registration, not on what the Registrant actually sells in the real world. In re A.C.E. International Company, Inc., Serial No. 77481947 (March 16, 2010) [not precedential].

Of course, the fact that the marks are identical weighed "heavily" in favor of a finding of likely confusion. Moreover, when the marks are identical, a lesser degree of similarity between the goods is necessary to support such a finding.

Applicant urged that Registrant is recognized for its cycling helmets. It pointed to the file history of the cited registration, where "protective helmets" were originally identified as "protective helmets for skiing and bicycling," and to Registrant's website.

Having presented this evidence, applicant decries the unfairness of this refusal to register inasmuch as Safilo’s “protective helmets” clearly do not include welding helmets, and applicant does not sell protective helmets for sports-related activities.

However, the Board pointed out that it would be improper to restrict or modify the Registrant's identification of goods based upon extrinsic evidence. The Board "must presume that registrant's 'protective helmets' might well include welding helmets."

The evidence showed that in common parlance the term "protective helmet" is used "interchangeably with welding helmet." In fact, in an earlier registration, Applicant referred to "protective or safety helmets." The website of a German [? - ed.] manufacturer offered motorcycle and welding helmets. And third-party registrations showed the same mark registered for sports-related activities and welding helmets.

Finally, Applicant argued that the purchasers of the involved goods are expensive and their purchasers are sophisticated. The Board observed that, in reality, the goods are obviously different, but the issue is not confusion as to the goods but confusion as to source. Applicant failed to provide evidence that purchasers of Registrant's good exercise great care, and even if there were such evidence, that would not necessarily mean that confusion would not be likely under the instant circumstances.

As to Applicant's argument about Registrant's amendment of its identification of goods, the Board suggested that the remedy may lie in Section 18 of the Trademark Act, whereby the registration might be restricted to sports-related helmets.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Are Condoms and Vibrators Related for 2(d) Purposes?

Line One Laboratories, Inc. petitioned to cancel a registration for the mark IMPULSE for "adult novelty items, namely, vibrators," alleging Section 2(d) likelihood of confusion with its identical mark for "condoms." The Board tossed out Respondent's laches defense, and found that Petitioner Line One had priority of use. The marks were identical, so the key issue before the Board was the relatedness of the goods. What do you think? Line One Laboratories Inc. v. California Exotic Novelties LLC, Cancellation No. 92046155 (March 17, 2010) [not precedential].

Laches: To establish laches, a party must show unreasonable delay resulting in prejudice to the other party. Here, the challenged registration issue on September 13, 2005, and that issuance constituted constructive notice to Petitioner. There was no evidence that Petitioner had actual evidence of Respondent California Exotic's use prior to the date. The petition for cancellation was filed less than 11 months later. This was not an unreasonable delay, and Respondent neither alleged nor proved any harm caused thereby.

Priority: Both parties owned registrations, and so each could rely on the filing date of its application to register as a date of use, and each may submit evidence to prove an earlier use date. Here, Respondent's testimony claimed a first use date of August 1, 2001 for vibrators.

Petitioner Line One proved use of the IMPULSE mark at least by 1998, and so Petitioner was deemed to have priority. The Board noted that priority "does not appear to be truly disputed by respondent."

Likelihood of confusion: The identity of the marks "weighed heavily in favor of petitioner."

As to the goods, Line One submitted three types of evidence to established relatedness: third-party registrations, trade magazines, and testimony. A half-dozen registrations identified both condoms and vibrators. Trade magazines advertised and reviewed both products. And Petitioner's witnesses testified that condoms are sold and promoted alongside vibrators and are displayed at the same trade shows.

Finally, Respondent pointed to the lack of any actual confusion, but of course proof of actual confusion is not necessary, and its absence "does not necessarily overcome a finding of likelihood of confusion."

And so the Board granted the petition for cancellation.

TTABlog note: Well, how did you do? Did you notice that I scrupulously avoided any puns?

Text Copyright John L. Welch 2010.

CAFC Affirms TTAB Ruling in "ML" Skin Care Products Case

In an enervating but nonetheless precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision in In re Mighty Leaf Tea, Serial No. 76678969 (May 8, 2009) [not precedential]. The Board had found the mark ML (in standard character form) for various personal care products and skin care preparations, likely to cause confusion with the registered mark shown immediately below, for "quite similar" skin care products. In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir. 2010) [precedential].

Appellant argued before the TTAB that "the existence of many similar marks showed the weakness of the registered mark, such that consumers would look to fine distinctions to distinguish the sources of goods." It pointed to the registered marks MLE, MLUXE, M’LIS, JML, and AMLAVI, and pending applications for MLAB, TMLA, FEMLOGIC, and SIMLINE, all for personal care or skin care products.

The Board observed that inclusion of the letters “ML” in other words or aggregates does not render these marks so similar and weak that the public would be alert to small differences.

Before the CAFC, Mighty Leaf contended that the Board erred in its analysis of the du Pont factors, and particularly the sixth factor: “The number and nature of similar marks in use on similar goods.” Appellant again argued that "consumers are already conditioned to look to minor distinctions in marks that include the letters 'ML.'" Therefore, Mighty Leaf Tea contended, the additional words MARK LEES distinguish the registrant’s mark from ML standing alone.

The CAFC disagreed, and instead sided with the Board:

The PTO states that the letters “ML” in various character strings does not establish these two letters as a common element, such as “Broadway,” that has acquired an understood meaning or suggestiveness. We agree that the occurrence of two letters in longer words or strings does not of itself establish a “common element,” for there was no evidence that the two letters “ML” had any recognized meaning or significance within the longer strings. The Board appropriately gave little weight to the proffered evidence of third-party use in view of these considerations.

As to the additional words in the cited registration:

[T]he Board found ... that ML is likely to be perceived as a shortened version of ML MARK LEES when used on the same or closely related skin care products. The Board thus recognized that these initials comprise a dominant feature of the registered mark, and that a newcomer’s use of the same initials, in connection with the same goods, would likely lead consumers to view the goods as coming from the same source. Avoidance of this kind of confusion about the provenance of goods is the very problem to which the Lanham Act was directed.

Other factors (the similarity of the goods, the overlap in channels of trade, and the non-sophistication of consumers) supported the Board's conclusion that confusion is likely.

And so the CAFC affirmed.

Text Copyright John L. Welch 2010.

Finding Transportation of Natural Gas Related to Freight Forwarding, TTAB Affirms 2(d) Refusal of "CGL"

Affirming a Section 2(d) refusal, the Board somewhat dubiously found the mark CGL for "transportation services, namely, transportation of natural gas via marine tankers," likely to cause confusion with the registered mark CGL & Design for "freight forwarding." The sophistication of the purchasers was outweighed by the similarity of the marks and the similarity of the services. In re SeaOne Maritime Corp., Serial No. 77436033 (March 30, 2010) [not precedential].

Not surprisingly, the Board found the marks to be similar in appearance, identical in sound and meaning, and highly similar in commercial impression.

As to the services, the Board relied on third-party registration evidence showing that "the same entity registered a single mark for freight forwarding and various transportation services." One of the registrations included "transportation and storage of fuels" and "freight forwarding." Several third-party websites showed that "the same entity renders both types of services, namely transportation services and freight forwarding."

Because there are no restrictions in the cited registration, the Board "must assume that registrant's freight forwarding services are offered via ships to entities in the energy field, just as in the case of applicant's transportation of natural gas via marine tankers." [That seems like a bit of a leap in logic to me - ed.]

And so, the Board found the services to be related.

Applicant argued that the purchasers of the involved services are "sophisticated customers who are discriminating due to the expensive cost of the services and the need for a quality provider of shipping needs." The Board, however, observed once again that "even careful purchasers are likely to be confused when encountering similar services offered under very similar marks." In short, "[t]he similarity between the marks and the similarity between the services outweigh any sophisticated purchasing decision."

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

TTABlog comment: I just don't think the services are sufficiently related. Apparently there was a single third-party registration that included both freight forwarding and transportation of energy. The website evidence apparently did not show both freight forwarding and transportation of energy. I just don't think natural gas qualifies as "freight." Assuming that the purchasing decision is made with care, I would have reversed the refusal. I don't think the Examining Attorney proved her case.

Text Copyright John L. Welch 2010.

CAFC Hears Oral Argument In Fred Beverages Fee Payment Case

The CAFC heard oral argument on Friday, April 9th, in an appeal from the TTAB's decision in Fred Beverages, Inc. v. Fred's Capital Management Company, Cancellation No. 92048454 (June 26, 2009) [not precedential]. Petitioner Fred Beverages filed a motion to amend its petition for cancellation of Registration No. 3051906, seeking to add four more classes to the petition. The Board denied the motion because it "was not accompanied by any payment or authorization to charge respondent's [sic] deposit account for any of the additional classes sought to be cancelled." An mp3 of the oral argument may be found here (Appeal No. 2010-1007).

As I stated in the TTABlog posting here, I thought the Board's decision was wrong because there is no Rule requiring that a party pay the fee for a cancellation petition when the party is merely filing a motion for leave to file the petition. Two former TTAB judges have told me that they disagree with me.

Based on its comments and questions at the hearing, however, I surmise that the CAFC believes that the Board erred because it acted arbitrarily in denying the motion when the Rules do not require that payment accompany such a motion, and because the Board has acted inconsistently in other cases by granting leave to amend and allowing a short time period to pay the fee for the cancellation petition.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is "EMIDIO TUCCI" Confusingly Similar to "EMILIO PUCCI" for Overlapping Goods?

One key point: the Board found EMILIO PUCCI to be a famous mark for clothing and accessories. Not surprisingly, the Board sustained a Section 2(d) opposition to registration of the mark EMIDIO TUCCI in the two stylized forms shown below, for perfume, cosmetics, clothing, and leather goods, finding the mark likely to cause confusion with the previously used and registered mark EMILIO PUCCI for apparel (mainly ladies'), leather goods, perfumes and lotions. Emilio Pucci Int. B.V. v. El Corte Ingles, S.A., Oppositions Nos. 91169638 and 91177724 (April 1, 2010) [not precedential].

The Board spent a dozen pages of its 34 page opinion discussing various evidentiary objections, with the bottom line being the admission of the evidence but mostly with little weight being accorded to it.

Long use of the EMILIO PUCCI mark, significant sales and advertising expenditures, unsolicited mentions in U.S. media, and the testimony of Applicant's own witness that the mark is "famous," led the Board to conclude that the mark has achieved fame for clothing and accessories.

Applicant argued that the fame of the EMILIO PUCCI mark is limited to "a small group of upper crust super rich people" who are sophisticated purchasers, and not including "the average Joe." The Board disagreed, noting the evidence of long use, extensive advertising, and extensive mention in the general press.

By way of analogy, it could hardly be denied that ROLLS-ROYCE is a very well-known brand of automobile, although only a small fraction of the population can actually afford to purchase one. [I own a Matchbox version. Doesn't that count? - ed.]

The Board pointed out that the fame of a mark "may easily exceed the group of consumers who are immediately able to and willing to purchase the goods."

The Trademark Act protects marks even in this larger group because both consumer confusion and harm to business reputation can result from the sale of cheaper goods under a similar mark, and because socioeconomic classes are not static. [I aspire to own a real RR one day. And also to fly to Mars. - ed.]

As to the goods, the Board found them to be "largely identical or closely related." Consequently, the Board must assume that the goods travel in the same channels of trade to the same classes of consumers. Applicant argued that Opposer's goods are extremely expensive and thus purchased by sophisticated consumers, but the Board pointed out that there are no such limitations in Opposer's registrations. In any case, "the mere fact that goods are expensive does not mean that their purchasers are sophisticated or immune from source confusion." [And vice versa: just because consumers are sophisticated does not mean that the goods are expensive. - ed.].

As to the marks, the Board found the similarities to outweigh the differences. The have similar connotations, both being "Italian-sounding personal names," and both giving the impression that the goods are "designed by, or received the personal approval of, the person named in the mark."

Balancing the relevant du Pont factors, the Board found confusion likely.

Applicant proposed that confusion would be avoided if its goods were limited to sale to men, but the Board rejected that notion, since Opposer in fact sells some men's products, and so such an amendment would not be effective.

The Board declined to pursue the issue of whether women buy men's clothing and vice versa.

Text Copyright John L. Welch 2010.

Sophistication of Purchasers Leads to TTAB Reversal of 2(d) Refusal of "TITAN" for Commercial Coffee Brewers

Because the respective goods are expensive and are likely to be purchased carefully by knowledgeable buyers, the Board reversed a refusal to register the mark TITAN for "large volume beverage brewing and dispensing equipment, namely, heated coffee and tea brewers and servers," finding it not likely to cause confusion with the identical mark registered for "cooking and cooling equipment, namely, electric and gas ranges; salamanders; electric broilers; cheesemelters; electric deep fryers; electric and gas ovens; refrigeration and cooling units, namely, food and beverage chilling units; freezers; food steamers; smokers; gas grills; and electric griddles.” In re Bunn-O-Matic Corporation, Serial No. 77137482 (March 30, 2010) [not precedential].

As to the marks, Applicant argued that it uses TITAN as a "double-entendre" relating to the size of the products, whereas the products of the registration are normal in size. The Board said no and no. "To the extent that TITAN has a particular meaning, it is likely to pertain equally to both applicant's and registrant's identified goods."

Applicant also argued that TITAN is a weak mark, since it appears in more than 1800 company names and numerous third-party registrations. The Board pointed out that this evidence does not show the strength or weakness of Applicant's mark in connection with its goods. It does show that TITAN is suggestive of large size or strength. But the marks are identical anyway.

salamander broiler
As to the goods, Applicant conceded that they would be found in a commercial food service, and that these goods would be sold by the same types of distributors. But applicant argued that the goods "are different, serve different purposes, and are not complementary," and it submitted evidence that the goods are purchased by knowledgeable professional buyers and that some distributors sell "everything from table linens to ovens."

The Examining Attorney submitted third-party registration evidence, but the registrations were owned by one entity. Her internet evidence pertained to goods for household use, not commercial products. And although the websites of several commercial food service distributors displayed both Applicant's and Registrant's goods, the goods "were identified by various brands that are different from the name of the distributor."

The Board agreed with Applicant that evidence of the sale of some of the respective goods through the same commercial distributors "is not determinative, as these distributors sell a wide variety of goods under various trademarks." [Like department stores, I suppose - ed.]

In short, the Board found the Examining Attorney's evidence insufficient to establish likelihood of confusion, particularly in light of the sophistication of the purchasers, and so the Board reversed the refusal to register.

TTABlog note: Compare this decision to the Board's ruling in In re Toshiba Medical Systems Corporation, 91 USPQ2d 1266 (TTAB 2009) [precedential]. [TTABlogged here]. There the Board found confusion likely between the marks TITAN and VINTAGE TITAN for medical imaging products, despite the sophistication of the purchasers.

TTABlog comment: I can see this decision going the other way. What about the old saw that "even sophisticated customers may be confused when identical marks are used on related goods"?

Text Copyright John L. Welch 2010.

Finding Clothing and Fountain Pens Related, TTAB Sustains "Le TIGRE" 2(d) Opposition

The near identity of the marks and the strength of Opposer's mark let the Board to sustain a Section 2(d) opposition to registration of the mark LE TIGRE for "writing instruments namely fountain pens, ball point pens, felt and fiber tip pens" and "markers and small leather goods, namely, cases for diaries and daily planners; and brief case type portfolios." The Board found Applicant's mark likely to cause confusion with the registered mark LE TIGRE (Stylized) shown immediately below, for various clothing items. Kenneth Cole Productions (LIC) Inc. v. Andrew Craig, Opposition No. 91161781 (March 23, 2010) [not precedential].

Not surprisingly, the Board found the marks to be visually similar, and identical in meaning and commercial impression. "Because of the near identity of the marks, this du Pont factor weighs heavily in favor of opposer and a finding of likelihood of confusion."

Opposer urged that its mark is famous, but the Board found its proofs to be inadequate. Opposer pointed to the fact that its registration is 28 years old and contended that its mark has received "enormous unsolicited publicity and media attention." But the Board noted the lack of evidence as to Opposer's sales and advertising figures.

Without this type of evidence, it is nearly impossible to gauge the level of success of the mark or the degree of exposure the general public has had to the mark. Further, without these numbers and those of competitors, it is difficult to place any success or relative fame into context.

Nonetheless, Board found that Opposer's mark is "certainly a strong mark for clothing."

Applicant argued that Opposer's mark is weak in view of third-party use of the same or similar marks on similar goods. But the bulk of Applicant's evidence comprised third-party registrations, which are not evidence of actual use. Applicant's Internet evidence showed use of the mark "tiger" rather than LE TIGRE. The Board concluded that this third du Pont factor was neutral.

Finally, turning to the goods, the Board observed once again that the greater the similarity in the marks, the less similarity is required between the goods to support a likelihood of confusion finding.

Based on the record evidence, and particularly the testimony of Opposer's witnesses and third-party registrations, the Board found that "it would not be uncommon for consumers to encounter the same trademark being used as a source identifier for clothing apparel as well as accessory items that would include applicant’s identified goods." For example, the COACH, LUIS VUITTON, KATE SPADE, and EMILIO PUCCI marks are so used. The Board therefore found the involved goods to be related.

The Board noted that the identifications of goods in the involved application and registration do not include any limitation as to channels of trade or classes or purchaser, and the evidence showed that at least "high end" brands of clothing are sold in the same commercial establishments as pens, daily planners, and portfolios.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2010.

Reminder: "TTAB Comes to Boston" - April 9th at Boston University School of Law

Seats are still available for the TTAB's visit to Boston on the afternoon of April 9th. The Board will hear final arguments 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).

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TTAB Resumes Proceedings in Oldest Pending Case

On March 31, 2010, the TTAB issued an Order resuming proceedings in its oldest pending case: United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The proceeding had been suspended for nearly 25 years in view of a civil action in the Maryland federal court, which civil action has itself been administratively closed since 1984. [See TTABlog postings here, here, and here].

The Board noted the parties' representations that they have recently been attempting to settle the case, and that counsel for the parties have been in direct and "ongoing" contact.

Given the apparent inactivity in the District Court case which occasioned the lengthy suspension of this proceeding, and the parties’ indication that they will take steps to formally terminate said case in the event that it remains open, further suspension of this cancellation proceeding pending the District Court case appears to be unnecessary and ineffective. Accordingly, proceedings are hereby resumed, and discovery and trial dates are reset ....

The Board set the date for the close of discovery as September 10, 2010. I wonder what Rules apply to a proceeding commenced in 1982?

Text Copyright John L. Welch 2010.

"ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB

The Board reversed two refusals to register the mark ILEX, finding it not deceptive for (Section 2(a)) and not deceptively misdescriptive of (Section 2(e)(1)) "medicated skin care preparations, namely, skin paste for use by ostomy patients to protect the stomal region of the body and medicated skin paste for the treatment of diaper rash." In re Medcon Products, Inc., Serial No. 76476330 (March 26, 2010) [not precedential].

The Examining Attorney contended that "ilex" is a plant of the holly genus, that ingredients derived from ilex plants are commonly found in skin care preparations, that Applicant's products do not contain ingredients derived from ilex, and that consumers are likely to buy Applicant's products with the mistaken belief that they do contain ilex ingredients.

Applicant argued that "ilex" is a coined term that combines “ileostomy,” a postsurgical condition that its skin paste is used to treat, and the word “excoriation,” the breakdown of skin surrounding the stoma, which is a common complication for patients with an ileostomy, that there is no need to include ilex in its product, and that the Examining Attorney's evidence pertains to cosmetic products or products taken orally, not a medicated skin paste.

Section 2(a) Deceptiveness: The Board applied its standard three-part test for determining whether a mark is deceptive under Section 2(a):

1) is the term misdescriptive of the character, quality, function, composition or use of the goods; (2) are prospective purchasers likely to believe that the misdescription actually describes the goods; and (3) is the misdescription likely to affect the decision to purchase.

As to the first prong, the Board found no evidence that medicated skin paste like Applicant's contains ingredients derived from ilex (holly) plants. "Given this, we do not see how the term ilex misdescribes applicant's goods."

Assuming arguendo that "ilex" does misdescribe the goods, the Board found the second and third prongs unmet. [Have you ever met a prong? - ed.] "Ilex" is the scientific plant name for "holly," and "it is highly unlikely that purchasers would be familiar with the term." Applicant's explanation of the derivation of the term was "entirely plausible." And so purchasers are not likely to be deceived by the mark into believing that the medicated skin past contains ingredients derived from ilex plants. "On the contrary, they are likely to view applicant's mark ILEX as a coined term."

Moreover, the evidence failed to show that ilex-derived ingredients are a desirable component of Applicant's product, and so any misdescription would not materially affect the purchasing decision.

Section 2(e)(1) Deceptive Misdescriptiveness: The test here consists of the first two prongs of the deceptiveness test. Those prongs were not met.

And so the Board reversed the refusal.

TTAB trivia?: Who sang the holiday favorite, "Holly, Jolly Christmas?" Burl Ilex.

Text Copyright John L. Welch 2010.

TTAB Finds "ToeSox" Generic for ... Guess What?

The Board affirmed a refusal to register the term ToeSox on the Supplemental Register, finding it to be generic for "socks." Applicant floated a few feeble arguments to fend off the refusal, but all were futile. In re ToeSox, Inc., Serial No. 77109709 (March 26, 2010) [not precedential].

The Board first deemed the genus of goods at issue to be "socks," a genus that includes "toe-fitting socks (i.e., socks that delineate the individual toes)." The relevant public "consists of the ordinary consumer interested in purchasing socks, including toe-fitting socks."

Examining Attorney Leigh A. Lowry provided the clear evidence needed to establish a prima facie case of genericness: a Wikipedia entry for "toe socks"; a bunch of Internet website pages and blog entries using the term generically; three registrations using "toe socks" in their identifications of goods; 440 LexisNexis articles referencing "toe socks"; and a Walgreens advertisement for "Super Soft Toe Socks and Glove Set."

The use of the term "toe socks" by competitors was "persuasive evidence" that the term is generic. In fact, even Applicant calls its products "toe sox."

The compression of "toe sox" into ToeSox does not avoid the genericness problem. See, e.g., In re Gould Paper Corp., 5 USPQ2d 811 (CCPA 1978) [SCREENWIPE generic for computer screen wipes]. Nor does the misspelling of the word "socks." See, e.g., In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) [MINERAL-LYX generic for livestock mineral licks]. [As a White Sox fan, I must protest. I spell "socks," s-o-x].

Applicant lamely asserted that the relevant customers are limited to people who practice yoga and pilates. [Not "pirates." They would never wear toe socks - ed.]. But the application at issue has no such limitation, and in any case, these yoga and pilates practitioners are members of the general public, and would buy socks for regular use as well.

Next, Applicant pointed out that ToeSox does not appear in any dictionary. However, it is "well settled that the fact that a term is not found in a dictionary is not controlling" on the genericness issue, and here the Examining Attorney established that ToeSox has a well understood and recognized meaning.

Applicant then argued that its extensive advertising and promotional efforts rebut any genericness finding, pointing to In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006) [TTABlogged here] for the proposition that "[s]ignificant amounts of marketing and advertising, and adequate policing of a mark negate a finding of genericness." But the Board countered that, although such evidence must be considered on the genericness issue, Applicant had failed to submit evidence of significant marketing, advertising, and policing.

And finally, Applicant contended that "yoga socks" is the generic name for socks with toes. The Board, however, observed that a product may have more than one generic name, and all of them are unregistrable.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2010.

TTABlog Newsflash: Stress Balls Are Smash Hit!

Following in the footsteps of the TTABlog floating keychain, the new TTABlog stress ball has become an instant classic. Pictured below is Ella Harris, frequent blog commenter, who was awarded the first of many TTABlog stress balls that will be foisted on unsuspecting friends, relatives, acquaintances, and complete strangers. Be sure to get yours at the INTA annual meeting.

TTABlog Quarterly Index: January - March 2010

This past quarter brought a dozen precedential decisions, including a significant ruling on the admissibility of website evidence at trial, an unexpected decision regarding the ability of a foreign trademark owner to bring a dilution claim based on the fame of its mark - despite lack of use in this country, a helpful ruling on the proper pleading of a post-Bose fraud claim, and a somewhat controversial determination regarding the registrability of KHORAN for wines. [Note that E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at ll-a.com. This month's photographs were taken at Boston's Museum of Fine Arts.]