Precedential No. 19: TTAB Snoringly Rules on Motions to Compel Production and to Exclude Trial Witness

In this not-very-exciting, yet precedential, procedural ruling the Board denied Applicant's motion to compel production of documents because Opposer Byer claimed it had produced all responsive documents, and it granted in part Applicant's motion to exclude one Edward Manburg as a trial witness, limiting the scope of his potential trial testimony. Byer California v. Clothing for Modern Times Ltd., 95 USPQ2d 1175 (TTAB 2010) [precedential].


Motion to compel: Although the motion was denied, the Board pointed out that Applicant may seek to exclude from evidence any information or documents that Opposer should have produced in response to discovery requests.

Motion to exclude: In its initial disclosures, Byer did not name Manburg as a person with knowledge of relevant facts. He was named in discovery responses and in Byer's pre-trial witness list. However, because Applicant waited until the last day of the discovery period to serve its discovery, it did not have a chance to depose Manburg. So it moved to exclude him as a trial witness.

The Board recited the "fairly unique" circumstances at hand and concluded that "fairness dictates a compromise approach which protects both parties interests." It decided to re-open discovery to allow Manburg's deposition to be taken and to permit Manburg to testify at the trial stage, but only as to subject matter as to which only he and not the other trial witness (properly identified by Byer), could accurately testify.

Text Copyright John L. Welch 2010.

Precedential No. 18: TTAB Affirms Rejection of Trademark Specimen as Mere Advertising and not Point-of-Sale Display

The Board affirmed a refusal to register the mark ANPATH for "All purpose disinfectant cleaning preparations for household, commercial and industrial use" on the ground that the mark, as used on Applicant's specimens of use, fails to function as a trademark for Applicant's goods. Applicant argued that its specimens should be treated as point-of-sale displays, but the Board found the specimens to be mere promotional pieces touting the advantages of the products and lacking sufficient ordering information to qualify as a proper trademark specimen. In re Anpath Group, Inc., 95 USPQ2d 1377 (TTAB 2010) [precedential].

Applicant's specimen flyer(click on photo for larger picture)
The Board observed that there is a "clear line of demarcation" between mere advertising materials (unacceptable) and point-of-purchase promotional materials (acceptable as a display associated with the goods). On which side of the line Applicant's specimens fall was the question at hand.

"Applicant correctly identifies the critical issue as whether either of its specimens is in the nature of a point-of-sale display." Examining Attorney Dominic Fathy maintained that, despite the prominent inclusion of a toll-free telephone number, the specimens do not include sufficient information to allow the customer to actually order the goods. Applicant, on the other hand, asserted that the specimens are the mechanisms through which purchases of the goods may be made.

Applicant argued that its specimen shows its mark near a description of the product and includes information on how to order the goods. The Board, however, found that the applicant's "pamphlet" and its "product ordering information" do not have the many characteristics of the Land's End catalogue (e.g., detailed descriptions and pictures having trademarks displayed prominently nearby, specifications and options, prices, colors, sizes, a detailed order form, etc.) and hence are not clearly analogous to printed material from which the goods are ordered."

The Board agreed with the Examining Attorney: "the specimens do not contain adequate information for making a decision to purchase the goods and placing an order, and hence, we conclude that applicant's specimens are nothing more than mere advertisements that do not show use of ANPATH as a trademark for the goods."

We find that these specimens are promotional pieces of literature primarily designed to tout the benefits of a product. We recognize that they list the URL of applicant’s website and/or a telephone number for contacting applicant’s sales representatives/ordering personnel; however, this level of information does not create the same point-of-sale situation as a detailed catalogue capable of allowing a consumer to consummate a physical order, or a detailed web page, or even the same as a situation where there is the option of placing an order via telephone based upon detailed information from the proffered specimen.

And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Text Copyright John L. Welch 2010.

Precedential No. 17: TTAB Says Section 18 Not Available for Requiring Disclaimer of Generic Part of Mark Registered for More Than 5 Years

In what appears to be a case of first impression involving application of Section 18 of the Trademark Act, the Board granted Respondent Anzar's motion to dismiss a petition for cancellation of a more-than-five-year-old registration for the mark MONTEPIO & Design for "pawn shop services" on the ground that the petition failed to state a claim on which relief can be granted. Petitioner Montecash alleged that MONTEPIO means "pawnshop" in Spanish and is therefore generic, requiring (1) cancellation of the entire registration, or (2) cancellation of the registration in part (i.e., removal of the word MONTEPIO), or (3) restriction of the registration under Section 18 by entering a disclaimer of MONTEPIO. Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060 (TTAB 2010) [precedential].


Cancellation of Entire Registration: In Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB 2007) [precedential], the Board ruled that a registration that is more than five years old may not be cancelled on the ground that a portion of the registered mark is generic. While Section 14 of the Trademark Act provides for cancellation of such a registration when the registered mark is, as a whole, generic, it does not provide for cancellation in the circumstances presented here.

Cancellation of the Registration in Part: Petitioner's request that the term MONTEPIO be deleted from Respondent's mark as registered is not provided for under Section 14(3) of the Trademark Act and is therefore unavailing. "Indeed, any deletions of matter from a registered mark which may materially alter the mark and/or may result in a mutilation of the mark as used by the registrant would be prohibited."

Restriction of the Registration via Disclaimer: The Board construed this claim as seeking relief under Section 18 of the Act:

The issue here, then, is whether Trademark Act §18 provides a basis for seeking entry of a disclaimer of a term which comprises only a part of the mark, and which has been asserted to be generic, when the registration is more than five years old, notwithstanding that §14(3) does not provide such a basis.

Looking at the terms of Section 18 and at its legislative history, the Board found that this type of relief is not expressly contemplated. "Moreover, to allow petitioner the relief it seeks under Section 18 would be inconsistent with the plain wording of both Sections 14(3) and 18."

The legislative history "clearly" contemplates that the Board would have authority under Section 18 to limit or otherwise modify the goods and services in a registration or application to avoid a likelihood of confusion. Section 18 is available even for registrations that are more than five years old.

However, Section 18 does not contain express provisions regarding the disclaimer of a generic term in a mark registered for more than five years. To read in such a provision would conflict with Section 14(3) and with the Finanz decision. Moreover, it is not contemplated by the legislative history.

Restriction is allowed in Section 2(d) cases in order to avoid a likelihood of confusion when the opponent is not using its mark on the goods or services to be deleted, "so as to allow the claiming party a place for its mark on the register." Here, in contrast, the request for a disclaimer, "unlike cases involving restriction of identification of goods, would not, in and of itself, allow marks to coexist on the register."

The Board's jurisdiction is limited to issues relating to the registrability of marks, and we clarify by this decision that a claim for restriction under Section 18 must not only be commercially significant but be related to the registrability of marks on the register.

Petitioner Montecash's claim was not aimed at allowing it to register its own mark. Therefore, it failed to state a claim under Section 18.

Text Copyright John L. Welch 2008.

MEET THE BLOGGERS VI: It Just Keeps Getting Better!

Lucky's Lounge was the place to be last night, as an enthusiastic and thirsty crowd gathered for Meet the Bloggers VI. Planning begins this morning for MTB VII next year in San Francisco. Marc Randazza promised to find a venue (now that will be interesting!).

Nate Harris toasts the crowd

MTB VI Co-hosts: Coleman, Chestek, Schwimmer, and Welch

Photos Copyright Welch and Randazza (respectively) 2010.

Precedential No. 16: Fraud Claim Survives Motion to Dismiss; Facts Pleaded with Sufficient Particularity

Petitioner Löwenbräu's fraud claim alleged that, according to its investigation, Respondent White Gold, at the time of filing its Statements of Use, was using its marks only on vodka and not on on all the goods listed in the Statement. Furthermore, Löwenbräu alleged that Respondent (but not than any particular individual) had the requisite intent to deceive the USPTO. The Board found those allegations to be sufficiently specific and particular to satisfy FRCP 9(b), and it denied Respondent's motion to dismiss. Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010) [precedential].

Registrant White Gold (a Russian company) received two registrations in 2008 for its mark WHITE GOLD (in standard character and design form) for "aperitifs; orak; brandy; wine; whiskey; gin; vodka; prepared alcoholic cocktails; liqueurs; alcoholic beverages, namely, alcoholic coffee-based beverage; alcoholic tea-based beverage; alcoholic punch; calvados; champagne; cognac; Curacao; herb liqueurs; ouzo; schnapps; tequila; alcoholic beverages containing fruit; distilled spirits; mead; peppermint liqueurs; alcoholic bitters; rum; sake; hard cider; rice alcohol." [I thought an orak was a vacuum cleaner - ed.]

Petitioner alleged "[u]pon information and belief, and upon the results of the investigation” that: (1) at the time it filed Statements of Use in connection with the applications that issued as its Registrations, Respondent’s marks "were not in use in connection with all of the goods referenced in the Statements of Use"; and that (2) "Respondent knowingly made false, material misrepresentations of fact in procuring the Registrations with the intent to defraud the U.S.P.T.O." because "Respondent knew that [its involved marks] were not in use in connection with all of the goods referenced in the Statements of Use at the time the Statements of Use were filed …."

White Gold contended that Löwenbräu did not allege sufficient facts for the Board to “reasonably infer that a specific individual knew of the withheld material information or of the falsity of the material misrepresentation, and withheld or misrepresented this information with a specific intent to deceive the PTO." It further argued that, in any case, it was entitled to registrations covering vodka. [Apparently, White Gold did not argue that it had used the marks on anything other than vodka].

The Board [if I may paraphrase, Russian-style] responded "tough shitsky." Löwenbräu's allegations were based not just on "information and belief" but on an investigation, and it alleged that “Respondent knowingly made false, material misrepresentations of fact in procuring the Registrations with the intent to defraud the U.S.P.T.O.” The Board found those allegations to be sufficiently specific and particular to satisfy Fed. R. Civ. P. 9(b).

Moreover, the Board pointed out, "the question is not whether petitioner has alleged that a nonparty 'specific individual' had the requisite intent, but rather whether petitioner has alleged with particularity that respondent, the defendant and owner of the subject Registrations, had the requisite intent."

We do not read In re Bose as requiring that a party identify a "specific individual" who "knew of the withheld material information or of the falsity of the material misrepresentation, and withheld or misrepresented this information with a specific intent to deceive the PTO," as respondent argues.

As to Respondent's argument regarding keeping its registrations, but only for vodka, the Board observed that "In re Bose did not change the consequences of fraud, when it is proved. A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class."

And so the Board denied the motion to dismiss.

TTABlog comment: I counted 30 items in Respondent's identification of goods. If it used the mark on only one out of 30 items, I think we have a winner in the Fraud Derby! Crank your FRAUD-O-METER's post-Bose arrow into the orange zone: RECKLESS DISREGARD FOR THE TRUTH !!


This has got to be fraud, regardless of what individual signed the verification or what his or her specific intent was. He or she was authorized to act for Respondent, and Respondent should be responsible for the statements made.

I think the Board should not only find fraud on those facts, but as an alternative ruling, find the Registrations void ab initio on the ground of filing of a false oath. Then let's see what the CAFC can do with those rulings.

Text Copyright John L. Welch 2010.

May 23 2010 Another Beautiful Day in Boston

Looks like another great day in Boston. The town is buzzing with excitement. It's great to see that INTA Milan won the Champions League Title. I suppose the INTA Soccer Committee will be celebrating today. Here are few photos from my morning stroll. I live about one block from the Christian Science Plaza and the Pru Mall. [I wonder if the latter is copyrighted too?]

Inside the Prudential Mall


Christian Science Plaza (again)

West Rutland Street, South End.

Champions League Final at Landsdowne Pub

An intense INTA crowd of soccer fans fans gathered at the Landsdowne Pub to watch Inter Milan defeat Bayern Munich 2-0 in the Champions League Final yesterday afternoon.

Photo by M. Schwimmer
Photo by J. Gomez

Photo by J. Gomez

Boston, May 22, Noon: Very Bright!

I took a taxi from Copley Square to the Convention Center just before noon. We hit about 15 red lights and the fare came to around $16.00. I was dragging my "artwork" to Hall B-1 for the INTA Art Show. Two things struck me: how big the convention center is, and how far it is from where you want to be in Boston. I worked out at the Seaport for four years, and we didn't call it Siberia for nothing. Here are a few photos.

Entrance to the Convention Center

Highway Vent Building directly across from Convention Center

Seaport area is popular for its cheap parking

Entrance to Lucky's Lounge, site of Meet The Bloggers VI, Monday, 8pm.

Boston, May 22, 8AM: Getting Brighter!

I left all my INTA stuff in my office, so I biked over this morning (it's only 2.25 miles) to pick it up. Of course, I couldn't resist taking a few photos along the way, though the camera I used is not my favorite. It's going to be a beautiful day, I think. I'm heading over to the Landsdowne Pub this afternoon to see the Champions League Final, along with Blogger Emeritus Marty Schwimmer.

Best park in Boston: Boston Public Garden

Boston Public Garden

Can you name the duckings?

The Landsdowne Pub is across from Fenway Park

Christian Science Plaza
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Boston May 22, 6:45AM: A Bit Gray This Morning

Well, it's a bit gray on my street this morning, but it's supposed to be sunny today, in the low 70's. Well, as they say in baseball, youneverknow.

Boston Weather Still Looking Good at 4PM

Charles River from my office, 4 PM. I have a hankering to get on my bike and ride home.

Boston at Noon, May 21: Sunny, Low 70's, Light Wind

Across the Longfellow Bridge into Boston
Zakim Bridge and Museum of Science

Boston Sunshine Continues as of 8 AM, May 21st.

I rode my bike to work today, from Back Bay across the Charles River to Cambridge. Here are a few pictures to provide assurance that the weather is looking good.


Copley Square looking toward Boston Public Library

Looking west along the Charles from Memorial Drive, Cambridge

Kendall Square, Cambridge

Behind One Main Street, Cambridge

View from my office window across to Boston
Photographs Copyright John L. Welch 2010.

Sunshine in Boston: May 21, 7AM, 66 degrees Farenheit

Christian Science Plaza, Boston. One of the guards at the Plaza asked me why I was taking this picture. I said I was going to post it on a blog. He said, you can't put the picture on the Internet because "it's copyrighted." I said, I'm a copyright lawyer and it's not.

Another TTABlogger Article: "Fraud and the TTAB: What Hath Bose Wrought?"

In connection with my talk on fraud yesterday at the International AntiCounterfeiting Coalition (IACC) meeting, I provided a paper entitled, "Fraud at the TTAB: What Hath Bose Wrought?" Unlike the article that I posted yesterday, this one focuses only on fraud.


Additional thought: Suppose that when the TTAB decided Medinol, it had simply declared the NEURO VASX registration void ab initio because it stemmed from a false verification? In other words, suppose the Board had never started down the fraud path that led to the Bose decision?

When an applicant files a use-based application but has not used the mark on any of the identified goods or services, the Board will declare the application void ab initio. When an applicant files an I-T-U application but cannot prove a bona fide intent to use the mark, the Board will find that application void ab initio. So why not do the same thing when an applicant files a false declaration in a Medinol type situation, where the mark has been used on some but not all of the listed goods? That would avoid the whole "intent" problem that now plagues the Board and trademark practitioners when applying fraud principles.

Text Copyright John L. Welch 2010.

TTABlogger Article: "TTAB developments: Bose and beyond"

My latest article discusses recent TTAB developments in the areas of fraud, bona fide intent, and the "famous marks" doctrine, as well as the Board's latest interpretations of various procedural rules. "TTAB developments: Bose and beyond," June-July 2010 World Trademark Review 64-68 (Issue 25). (Subscribe to WTR here).


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Summary of TPAC May 7th Public Meeting

Erik Pelton reports here on the May 7th quarterly Public Meeting of the Trademark Public Advisory Committee (TPAC).


As to our favorite tribunal, Erik says this:

Trademark Trial and Appeal Board Update from Judge Gerard F. Rodgers, Acting Chief Judge:

* Case load is backed up, primarily because of significant time investment by judges and interlocutory staff toward updating the TBMP.
* TBMP update should be done by the end of the year.
* New filings are down compared to previous years.
* The Board is promoting Accelerated Case Resolution options and would like to add a menu of several “plug-and-play” templates for different needs that may appeal to parties in different situations. TPAC will likely seek public comment in the fall from trademark organizations regarding this menu of templates.

CAFC Turns Its Attention From Trademark Fraud to Patent Inequitable Conduct

In its Bose decision last year, the U.S. Court of Appeals for the Federal Circuit knocked down the underpinnings of the TTAB's fraud jurisprudence (i.e., Medinol) and demanded a higher standard of proof for fraud. It now appears that the CAFC's focus on trademark fraud was only one facet of its current concern with the issues of intent and materiality in connection with USPTO transactions. On April 26, 2010, the court granted a petition for rehearing en banc in Therasense, Inc. v. Becton, Dickinson & Co., Appeal No. 2008-1511, in order to consider the parameters of the inequitable conduct doctrine in patent law. In particular, the court ordered the parties to address the six questions set out below [See the court's Order here].

1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?

2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?

3. What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

4. Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).

5. Should the balancing inquiry (balancing materiality and intent) be abandoned?

6. Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.

The issue of inequitable conduct has been a hot topic in patent litigation for decades. It is a much more complicated determination than trademark fraud, as I tried to explain in this posting. The issue of materiality is particularly difficult in the patent context, and the consequences of a finding of inequitable conduct (loss of all rights) are substantial. Therefore a high standard of proof should apply.

But my question is, why should such a high standard apply to trademark fraud, where the materiality determination is straightforward (a "but-for" test), and the consequences of a finding of fraud (loss of an application or registration, but not common law rights in the mark) are considerably less severe?

Looking at question 6 in the court's Order in Therasense, it appears that the CAFC may look to the heightened trademark fraud standard to justify a higher standard on the patent side. Unfortunately, the CAFC believes that trademark fraud and patent inequitable conduct are twins, apparently because the issues arise in the same agency, the USPTO. But as I have argued, patents and trademarks have nothing to do with each other. Their location in a single government agency is an historical fact, but not a logical one. There is no reason why the two standards should be the same.

Here's my new question: was the demise of the TTAB's Medinol doctrine more the result of the CAFC's concern about its patent inequitable conduct doctrine than a real understanding of trademark law and practice? Inquiring minds want to know.

TTABlog note: If you want to read more about the Therasense case, I recommend the Patently-O blog, where you will find the briefs and much commentary as the case progresses.

Text Copyright John L. Welch 2010.

TTABlog Special Quiz: Do You Know Your Red Sox Trivia?

If you are coming to Boston for INTA 2010 and expect to converse with the local rabble, you'd better know your Red Sox trivia. Here's a special quiz to get you started. Can you name the six players depicted below? E-mail your answers to me at jwelch at lalaw.com. [Note the new firm e-mail address: "lalaw.com" instead of "ll-a.com"]. Get them all correct and you can pick up a TTABlog stress ball at Meet the Bloggers VI.

In Stinging Reversal, TTAB Finds "SOLIGA FOREST HONEY" Not Confusingly Similer to "FOREST HONEY" Design Mark

Just two days after oral argument, the Board issued its decision in In re Himalaya Global Holdings, Ltd., Serial No. 77117183 (May 14, 2010) [not precedential], reversing a Section 2(d) refusal of the mark SOLIGA FOREST HONEY for honey [FOREST HONEY disclaimed]. The Examining Attorney had found the mark confusingly similar to the registered mark FOREST HONEY & Design for honey [HONEY disclaimed], but the Board found that not to bee the case.


Applicant stated that SOLIGA “refers to a tribal group living in the forest regions of the Karnataka State of India,” and that SOLIGA FOREST "has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language.”

Applicant and the Examining Attorney agreed that "forest honey" is a type of honey. However, the Examining Attorney "appeared to believe" that the term cannot be considered merely descriptive of the registrant’s goods because the registration contains a disclaimer of only the word HONEY, not FOREST HONEY. She considered Applicant’s arguments that the term FOREST HONEY is generic to be an improper collateral attack on the validity of the registration.

The Board disagreed: "The registration affords prima facie rights in the mark as a whole, not in any component. Thus, a showing of descriptiveness or genericness of a part of a mark does not constitute an attack on the registration."

The Examining Attorney also considered the word portion of the registered mark to be entitled to greater weight in the 2(d) analysis. However, the Board pointed out, that is not a fixed rule. Here, "because of the highly descriptive, if not generic, nature of the words FOREST HONEY, the prominent display of the design, and the depiction of the word HONEY, which gives the appearance of being written with honey, we consider the design portion of the cited mark to be dominant."

On the other hand, SOLIGA is the dominant portion of the applied-for mark.

Consequently, the Board concluded that the marks are so different that confusion is not likely to result, and so it reversed the 2(d) refusal.

TTABlog comment: One of my least favorite songs of all time:



One of my favorites:



Text Copyright John L. Welch 2010.

TTABlog Road Trip: Boston Meeting of International AntiCounterfeiting Coalition (IACC)

Yours truly, the TTABlogger, will be participating in a panel discussion at the Annual Spring Meeting of the International AntiCounterfeiting Coalition (IACC) in Boston on Thursday, May 20th. [Details here]. Co-panelist are Commissioner of Trademarks Lynne Beresford and trademark guru Joseph Dreitler. David Friedland will be the moderator. The topic: FRAUD AS A SWORD, SHIELD AND FORCEFIELD.

What all Brand Owners should know about enforcing and maintaining their portfolios!

Hear from industry experts, including the USPTO Commissioner of Trademarks, about important issues surrounding registration and maintenance of your trademarks and the effects that improper submissions or poor record-keeping may have on your ability to maintain and successfully enforce your companies' most valuable assets.

Moderator: David Friedland, Lott & Friedland
Panelists: Lynne Beresford, Commissioner of Trademarks USPTO
Joe Dreitler, Bricker & Eckler
John L. Welch, Lando & Anastasi, LLP

Be there or be square.
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Finding "BORN=OFFICIAL & Design" and "BØRN" Too Dissimilar, TTAB Dismisses 2(d) Opposition

This Section 2(d) opposition hinged on the issue of the similarity of the marks. Applicant Delfyette sought to register the logo mark shown below left for various items of men's, women's, and children's sportswear. Opposer claimed likelihood of confusion with, and likely dilution of, its registered marks shown below right, for footwear and leather goods, respectively. Columbia Insurance Company v. Eric J. Delfyette, Opposition No. 91177903 (May 13, 2010) [not precedential].


Opposer claimed that its marks are famous, but its proofs fell far short. [Good bye, dilution claim! - ed..] Applicant attempted to show that Opposer's marks are weak in light of a number of third party registrations [e.g., BORN INTO IT; BROOKLYN BORN; BORN IN THE BRONX; and BORN IN AMERICA], but the Board found th0se marks irrelevant since they each create specific and different commercial impressions. Moreover, mere registration is not evidence that the marks are actually in use. Thus the third-party registrations had no probative value.

As to the marks, the Board focused on the closer of the two marks of Opposer, and concluded that the presence of the Ø "is sufficient to impart a slightly different appearance and connotation than the term BORN in applicant's mark."

The Board observed that the similarity of the marks ends with the word "Born." Opposer maintained that the wording BORN=OFFICIAL in Applicant's mark suggests that the goods are "an authorized or 'official' BORN product - originating from or authorized by the same source." The Board, however, found that "highly speculative," especially in the absence of any evidence as to how Applicant intends to use his mark.

Applicant's mark includes a "prominent design of a highly stylized silhouette of a child or infant wearing oversized work or combat boots inside a circular carrier." This results in a "substantial difference between applicant's mark and the mark in opposer's '333 registration."

In view of the visually prominent design element in applicant’s mark and the differences in appearance, sound and connotation of the literal portions of the marks in the context of the parties’ goods, we find that, despite both marks including the highly similar wording BORN versus BØRN, the differences are sufficient to distinguish applicant’s mark from the mark in opposer’s ‘333 Registration; overall they convey dissimilar commercial impressions.

Likewise, Applicant's mark is not confusingly similar to the more dissimilar mark of Opposer's second registration (having a crown design within the letter O).

And so the Board dismissed the opposition.

TTABlog comment: Note that Opposer is an insurance company. Would you buy footwear from an insurance company? Maybe if it's a sole proprietorship.

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is This Mark, With Disclaimer, Stylized Enough for the Principal Register?

The Board found the term IT BAG to be merely descriptive of "travel bags; multi-purpose purses; purses." But here's the question: if Applicant disclaimed IT BAG in the applied-for mark shown below, is the mark sufficiently distinctive to merit a registration on the Principal Register? You be the judge. The TJX Companies, Inc. v. Denise Marie Barr, Opposition No. 91185498 (April 30, 2010) [not precedential].


After almost stumbling over the standing hurdle, Opposer established that the term "It Bag" is used to describe a handbag which is "trendy, fashionable or stylish in nature." In other words, it's a bag that some consumers must have.

That led to this question: whether the mark IT BAG in the stylized form shown above is registrable on the Principal Register with a disclaimer of IT BAG. When descriptive words are presented in a distinctive design, "the design may render the mark as a whole registrable, provided that the words are disclaimed, under Section 6."

we must determine if the stylization of the mark is inherently distinctive; that is, the “stylization of the words or the accompanying design features of the asserted mark [must] create an impression on purchasers separate and apart from the impression made by the words themselves."

The Board then reviewed several relevant, prior decisions on the issue:

Marks found not to have inherently distinctive stylization:






Marks found registrable because of distinctive stylization:








Here's the decision: The Board found the applied-for mark to be "far more distinctive than any of the marks cited above which were refused registration and is more in the nature of the marks which were registered on the Principal Register." The Board explained:

the substantially vertical, overlapping upper case “I” and lower case “T” of approximately equal size and of different shading in “IT,” with the base of the “I” complimenting the base of the “T,” creates an impression on purchasers separate and apart from the impression made by the words themselves.

Therefore the Board sustained the opposition but allowed Applicant thirty days to submit a disclaimer of IT BAG, in which case the decision will be set aside and the mark "forwarded for registration."

TTABlog comments: Well, how did you do? Compare this decision to the recent JUMBOZ decision (blogged here).

I found it curious that the Board considered the disclaimer issue at all. It seems it was raised by Opposer, not Applicant, and Opposer raised it only in its pleading and not in its brief.

Former TTAB Judge Beth Chapman pointed out to me this morning that the Board should have returned the application (an ITU) to the office for issuance of a notice of allowance, nor for registration.

Text Copyright John L. Welch 2010.