TTAB Affirms 2(d) Refusal of "MARSHLAND" Over "MARSHLANDER," Finding Camouflage Fabric and Raingear Related

The Board affirmed a Section 2(d) refusal to register the mark MARSHLAND for camouflage fabric "sold as an integral component of finished clothing items," finding the mark likely to cause confusion with the registered mark MARSHLANDER, in standard character and design form, for raingear. In re NTA Enterprise, Inc., Serial No. 77575867 (August 6, 2010) [not precedential].


The Marks: Not surprisingly, the Board found the marks to be similar. The "ER" suffix is not sufficient to differential the marks, and the design element of Registrant's mark merely reinforces the "impression of [a] person from a marshy or swampy region (i.e., a marshlander)."

Applicant pointed to six third-party registrations for marks that include the word "MARSH" for clothing items, but there was no evidence that the marks "are actually being used, much less that the extent of such third-party use is so great that consumers have become accustomed to seeing the various marks and, therefore, have learned to distinguish them."

The Board observed that third-party registrations may be used in the manner of a dictionary to show that a term is descriptive or suggestive of goods or services, but six registrations "do not prove that the term MARSHLANDER is so weak and diluted that applicant's change to MARSHLAND is sufficient to distinguish the marks." "At most, 'Marshlander' may suggest that the clothing or fabric has an outdoor theme," and the mark is therefore inherently distinctive.

The Goods: Examining Attorney John M. Wilke submitted excerpts from various websites "advertising clothing referencing the fabric from which the clothing is made."

This evidence demonstrates that retailers advertise clothing and fabrics together and, therefore, consumers of finished clothing items may come in contact with the fabric and the mark for the fabric from which the clothing items are made. Accordingly, we find that consumers are likely to ascribe a common origin to fabric and finished clothing that share a similar trademark.

The Board also noted that the website evidence included numerous examples of camouflage raingear: "Consumers could easily mistakenly believe that applicant's camouflage fabrics and registrant's raingear emanate from the same source because of the similarity of the marks."

Moreover, the involved goods would move through the same retail clothing channels and would be encountered by the ultimate consumer.

And so the Board concluded that confusion is likely.

TTABlog comment: Note that there was no evidence that both fabric and clothing is sold under the same mark. But still, if you saw a MARSHLANDER brand jacket next to a jacket featuring MARSHLAND brand fabric, you would likely be confused, wouldn't you?

Text Copyright John L. Welch 2010.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "ZEOLITE" for Dishwashers

This applicant tried everything but the kitchen sink in attempting to overcome a Section 2(e)(1) mere descriptiveness refusal of the mark ZEOLITE for dishwashers. Nonetheless, its appeal went right down the drain. Would You Have Appealed? In re BSH Bosch und Siemens Hausgeraete GmbH, Serial No. 77586001 (August 13, 2010) [not precedential].

zeolite
Examining Attorney Tasneem Hussain maintained that "zeolite" is a specific type of silicate material and that Applicant's own website touts the use of zeolite in its dishwashers.

Applicant contended that the dictionary makes no mention of dishwashers in defining "zeolite" [I'm shocked! - ed.]; that "zeolite" does not convey any immediate information regarding the goods [What about that website? - ed.]; that the term is infrequently used and therefore consumers won't perceive that it names a feature of the goods; and that registration of the mark will not deprive competitors of the ability to use the term descriptively.

From a review of the record evidence, the Board litotically found it "hard not to conclude" that zeolite is not a significant feature of Applicant's appliances: several pounds of zeolite are held in a special compartment that is accessed during the machine's drying phase.

In short, the Board had "no doubt" that the mark immediately describes Applicant's goods.

Applicant, however, boldly urged that ZEOLITE is non-descriptive, like the mark SHEER ELEGANCE for pantyhose. The Board, however, contrasted ZEOLITE with that mark, and with SUGAR AND SPICE, CHABLIS WITH A TWIST, and NO BONES ABOUT IT, and found no double-entendre in Applicant's mark. [What if Applicant had used the advertising slogan: ZEOLITE UP MY LIFE? - ed.]

The purported fact that Applicant is the first and only user of the mark ZEOLITE does not, of course, avoid mere descriptiveness. And the fact that others could still use the term "zeolite" in its dictionary sense does not justify registration:

To recognize this as an inherently distinctive source-indicator for dishwashers would be to create potential disruption in the marketplace where competitors would be leery of using the term in its ordinary, descriptive sense for fear of infringing applicant’s registered mark.

Finally, Applicant' insisted that zeolite has so many uses that the term would not convey an immediate idea regarding the nature or characteristics of Applicant's dishwashers. The Board, however, pointed out for the umpteenth time that the mere descriptiveness determination is not a guessing game and that the proposed mark must be considered in relation to the goods.

The proto-typical consumer of our legal test for mere descriptiveness is not blindfolded, but knows full well that applicant is not using the mark in connection with cars, software, phones, etc. Rather, the relevant consumer knows that applicant is manufacturing and marketing dishwashers having a special drying feature that saves energy. We also presume that this prospective purchaser understands the relevant connotation of the word “Zeolite.” We find that such a consumer, upon first encountering applicant’s Zeolite goods in the marketplace will immediately, without conjecture or multi-stage reasoning, reach a conclusion as to one significant feature, function or characteristic of applicant’s dishwashers.

And so the Board affirmed the refusal.

TTABlog comment: I think this decision should be precedential. Even though it's pretty straigthforward, the opinion includes nice explanations of several facets of the law of mere descriptiveness.

TTABlog note: Applicant's identification of goods reads "household and kitchen machines and equipment, namely, electric kitchen machines and equipment, namely, dishwashers; structural parts of all aforementioned goods in International Class 7.1." Couldn't it just say "dishwashers and structural parts therefor?"

Text Copyright John L. Welch 2010.

Free Case Book: "Fundamentals of Intellectual Property Law" by Prof. Thomas G. Field, Jr.

Professor Tom Field of the University of New Hampshire School of Law has made available his casebook entitled ""Fundamentals of Intellectual Property Law." [Downloadable here]. "The PDF is approximately the 20th revision of a conventional 470 pp. casebook. It has been used twice annually in 3-semester-hour survey courses since 1999. Except for a few years when it was published by Carolina Academic Press, it has been revised each semester. This edition will be used in the spring 2010."

Pamela Chestek Comments on "METAL GEAR" WYHO Case

Pamela Chestek, ip ownership maven, comments here on the ownership issue in the recent METAL GEAR case. [TTABlogged here].

So DAT thought up the mark, spec'd the goods, and arranging for manufacturing with several companies - in other words, did what every brand name company who manufactures offshore does. The opposer then bought unauthorized goods and had the nerve to claim that the cheating manufacturer owned the mark. I should hope a fraud claim wouldn't fly.

You said it, Pam!
.

Rejecting Broad Interpretation of Cited Registration, TTAB Reverses 2(d) Refusal of "RED BOX DIVERSITY SYSTEM"

The Board reversed a refusal to register the mark RED BOX DIVERSITY SYSTEM in the design form shown below [DIVERSITY SYSTEM disclaimed], for "education services, namely, providing training, by way of classes, seminars, conferences and workshops in the field of cultural diversity, community education and human relations." The Examining Attorney had deemed the mark confusingly similar to the registered mark RED BOX for "books, pamphlets, brochures and journals relating to financial, legal, corporate and other business related topics," but the Board found the involved goods and services not to be related. In re Beyond Diversity Resource Center, Inc., Serial No. 77722602 (August 19, 2010) [not precedential].


Not surprisingly, the Board promptly found the marks to be similar, since the words RED BOX constitute the dominant portion of Applicant's mark. Moreover, the color red and the design portion of the mark simply reinforce the meaning of RED BOX.

As to the goods and services, however, the Board did some thinking outside the box. It agreed that educational service and printed materials may be related, but it refused to accept the Examining Attorney's interpretation of the scope of the cited registration.

According to the Examining Attorney, "How one interacts with fellow employees is a quintessential business topic. ... It is integral to understand, accommodate and maximize the potential benefits employee diversity entails in order to have a successful business."

The Board, however, concluded that, taken as a whole, "registrant’s identification is not so open-ended to include any possible service any business or organization may need. The wording, 'financial, legal, corporate' provides the framework for the general scope of the identification."

Applicant’s training in diversity, community education and human relations is not a business-related topic except in an extremely broad sense of the term. The examining attorney’s interpretation would include anything, for example, cafeteria services, where businesses provide access to meals onsite, or child care services, where businesses provide onsite daycare.

Furthermore, there was no evidence of record that shows "diversity training services and printed matter on financial, legal, corporate, and other business-related topics being offered by a single source."

And so the Board found that Registrant's goods are not related to Applicant's services. Furthermore, Applicant's services would be purchased with "sufficient care to preclude confusion.

The Board therefore reversed the refusal.

TTABlog comment: Seems like the overly-broad identification of goods in the registration is a candidate for a Section 18 partial cancellation.

Text Copyright John L. Welch 2010.

We Have a TTABlog Stress Ball Winner: Michael Tschupp

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Precedential No. 33: Opposer Proves Priority Based on Sale of Ventilators for Test Purposes

Opposer Automedx breathed more easily after the Board sustained its Section 2(d) opposition to registration of the mark SAVE for medical "ventilators," finding the mark likely to cause confusion with Opposer's mark SAVe for portable ventilators. The sole contested issue was priority of use, and the Board sided with Opposer Automedx based on its earlier sale of ventilators to the Air Force for purposes of testing and refinement. Automedx, Inc. v. Artivent Corporation, 95 USPQ2d 1976 (TTAB 2010) [precedential].


Judge Bergsman laid out the facts and the issues in his usual well-organized fashion. This posting will attempt to hit the high points.

Applicant was entitled to claim the filing date of its I-T-U application, October 10, 2006, as its date of first use. Automedx relied on sales prior to that date, which sales were "made for purposes of testing and were completed prior to FDA approval of opposer's ventilators for human use." Applicant contended that those sales constituted neither bona fide use, nor lawful use.

Bona Fide Use: As to the sales themselves, the issue was "whether Opposer's April 2005 and August 2006 sales were test sales for legitimate commercial purposes in the ordinary course of trade or token sales to reserve the mark for registration." The Board found the former and not the latter.

The Board disagreed with Applicant's assertion that FDA approval is required before a sale may be bona fide. The sales were "mutually beneficial in that they allowed the military to test the initial units before committing to a larger purpose, and they permitted opposer to refine the produce to make it commercially attractive." These were arms-length transactions in which properly labeled SAVe ventilators were sold and transported in commerce. The fact that they were sold for testing purposes does not make the sale and transportation of the goods less legitimate.

Applicant pointed to the lack of documentary support for the April 2005 sale, but the Board found the testimony of Opposer's witnesses to be consistent, definite, and without contradictions.

Lawful Use: The determination of lawful use involves two questions: (1) whether there is a previous determination that a party has not complied with a relevant statute; or (2) whether there is a per se violation of a statute. Here, there was no prior determination of illegality, and so Applicant relied on the per se prong of the test.

According to applicant, if the portable ventilators are goods in trade, which they must be in order for opposer to claim priority, then the sale of the portable ventilators must be approved for human use by the FDA to constitute lawful use in commerce.

The Board, however, quickly dismissed this argument: "While they were not sold for human use, they were bona fide sales and there is no perceptible violation of any laws or regulations." There is no requirement of FDA approval for goods sold to the military for testing purposes.

And so the Board sustained the opposition.

TTABlog comment: The devices were tested on the laboratory bench and in swine studies. What if the tests had included human guinea pigs? BTW: FDA approval was obtained in 2007.

Even if the Board found these early sales not to qualify as trademark use, would they have constituted use analogous to trademark use for priority purposes? Or were they not public enough?

Text Copyright John L. Welch 2010.

TTAB Reverses 2(d) Refusal of "WISH YOU WERE HERE" for Underwear

The "strong differences" in the marks, coupled with the differences in the goods, led the Board to reverse a Section 2(d) refusal to register WISH YOU WERE HERE (in standard character form) for underwear. The Examining Attorney maintained that the mark was likely to cause confusion with the mark depicted immediately below, for "women’s dresses, shirts, skirts and apparel." In re Diane R. Gunter, Serial No. 77227513 (August 20, 2010) [not precedential].


The Marks: The Board agreed with Applicant Gunter that the Examining Attorney improperly focused on the common phrase "wish you were here."

The words “Love, Jetsy” and the overall postcard design are very noticeable and they have the effect of catching the eye and engaging the viewer before the viewer even looks at the phrase “Wish you were here!” In this context, the “Wish you were here!” phrase is a postcard cliché that acts merely to reinforce the design element of the postcard, and would not otherwise make an impression on the viewer.

The Board concluded that the marks differed "significantly in appearance, pronunciation, connotation and commercial impression."


The Goods: As to the goods of the cited registration, the Board refused to read "shirts" to include underwear, and it pointed out that "apparel" means outer garments. The Examining Attorney's probative Internet evidence (two websites) at most showed that the trade channels for the involved goods overlap, but that was not enough to prove that the goods are "closely related."

The Board therefore reversed the refusal to register.

TTABlog comment: It seems to me that the phrase "wish you were here" on underwear has quite a different connotation from "wish you were here" on a postcard. Unless maybe it's a French postcard?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is "ONCE A MARINE, ALWAYS A MARINE" on Clothing a Trademark, Or Merely Informational?

Eagle Crest applied to register the mark ONCE A MARINE, ALWAYS A MARINE for various clothing items. The Examining Attorney refused registration, maintaining that the phrase, as it appears on the specimens of use (see photos below), would be perceived as merely informational and not as a trademark. Applicant appealed. How would you decide? In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) [precedential].


The Board began by observing that "not every designation adopted with the intention that it performs as a trademark and even labeled as a trademark necessarily accomplishes that purpose." Some designations are "inherently incapable of functioning as trademarks." The crucial issue is public perception.

Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.

Here, Eagle Crest admitted that the phrase ONCE A MARINE, ALWAYS A MARINE is a "motto associated with and used by and about marines by them and their admirers." Said the Board: "There is no dispute that the phrase ... is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use." In fact, the evidence showed that it is commonly used by others as informational and ornamental matter on t-shirts and other items. "Applicant is not entitled to appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own clothing."

Applicant's manner of use of the slogan likely reinforces the perception of ONCE A MARINE, ALWAYS A MARINE as merely informational. Applicant's website offers this slogan along with eight other military or patriotic messages that the consumer may choose for imprinting on a clothing item. Clearly, consumers want to display their support for the Marines.


Eagle Crest asserted that other common Marine expressions, such as "HOOAH!" and "GUNG-HO!" are "trademarked." The Board perceptively remarked, "It is not clear what applicant means by 'trademarked," and it then pointed out that the other registrations for mottos or slogans are irrelevant to the case at hand.

And so, the Board affirmed the refusal.

TTABlog comment: Hooray for the Board in pointing out that "trademark" is not a verb. But I wonder about the Board's statement that ONCE A MARINE, ALWAYS A MARINE could never be a trademark. Does it depend on usage? What if the slogan appeared only on the sewn-in label of the garment and was not viewable when the garment is worn? Would it be just informational in that case? Or is the slogan unregistrable anyway, because such a registration would hinder use by others.

If the latter, where do you draw the line between unregistrable common phrases and registrable ones?

Text Copyright John L. Welch 2010.

WYHO? TTAB Tosses Out Feeble Fraud and Mere Descriptiveness Claims

Eighty-sixing Opposer's fraud and mere descriptiveness claims, the Board dismissed this opposition to registration of the mark METAL GEAR for "enclosures for external computer hard drives" [METAL disclaimed]. Opposer Galaxy alleged that Applicant DAT committed fraud when DAT represented that is was the owner of the mark, but Galaxy failed to prove fraud "to the hilt." And its Section 2(e)(1) claim fell well short of the mark. Would You Have Opposed? Galaxy Metal Gear, Inc. v. Direct Access Technology, Inc., Opposition No. 91184213 (August 10, 2010) [not precedential].


Fraud: Galaxy alleged that "[b]oth Opposer and Applicant purchased products with Metal Gear mark from a foreign supplier known as Data Stor [sic], who is the real owner and first user of Metal Gear mark in U.S. Commerce." [SIC!] According to Galaxy, Applicant DAT is a "mere importer and distributor" of the goods.

The Board pointed out that, under Bose, fraud must be proven "to the hilt" with "clear and convincing evidence." Here, however, DAT's principal gave "convincing testimony that he believed and continues to believe that applicant is the owner of the METAL GEAR mark":

Q: At the time the application was filed, do you
believe that Metal Gear was DAT’s trademark?
A: Yes.
Q: How about today?
A: Still is.
Q: Why do you believe it’s DAT’s trademark?
A: Because we came up with the brand name and we contact the manufacturer to manufacture product for us under the brand name.
Q: Who set the specifications for the product?
A: I did. DAT did.
Q: Did you personally come up with the specifications for the product?
A: Yes.

The Board observed that, even if the witness were incorrect in his belief that DAT owned the mark, Galaxy failed to prove a subjective intent to deceive. And so the Board tossed out the fraud claim. [Instead of alleging fraud, thereby invoking the impossibly high Bose standard of proof, why didn't Opposer just allege non-ownership? - ed.]

Mere Descriptiveness: Galaxy relied on dictionary definitions of "metal" and "gear," but its own principal conceded that "there's nothing about the Metal Gear trademark that makes [him] think it describes" an enclosure.

The Board found that "to refer to computer hard drive enclosures as 'gear' is at worst suggestive. The enclosures do not inherently have any 'gears' nor can they simply be described as 'equipment.'"

The Board therefore found that METAL GEAR is suggestive, and it dismissed this Section 2(e)(1) claim.

TTABlog comment: Where did the term "eighty-six" come from? The best explanation I've heard is this: The Lexington Avenue subway line in New York City used to stop at Eighty-Sixth Street. When the train reached Eighty-Sixth, the conductor would toss all sleeping bums off the train. They would be "eighty-sixed."

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Is An Amendment From "MT RAINIER" To "RAINIER" Permissible?

When it submitted its Statement of Use, Applicant Thor Tech sought to amend its mark for travel trailers from MT RAINIER to RAINIER. The Examining Attorney refused to enter the amendment, deeming the proposed change to be a “material alteration” of the mark in violation of 37 CFR §2.72. Thor Tech claimed that "Rainier" is recognized as an abbreviated form of "Mt Rainier." What say you? In re Thor Tech, Serial No. 78717682 (August 13, 2010) [not precedential].

Guess What?
Under CAFC precedent, the Board must "look to whether applicant’s proposed amendment contains 'the essence of the original mark' or whether instead the amended mark is so altered that it would 'have to be republished' in order to 'fairly present' it for 'purposes of opposition.'"

Thor Tech maintained that "Dictionaries define 'Rainier' as 'Mt. Rainer,' Encyclopedia articles use Mt. Rainier and Rainier interchangeably when referring to the mountain. Internet searches for the term 'Rainier' alone list 'Mt. Rainier' as the first and most relevant topic of such a search query."

The Board pointed out, however, that "Mount Rainier" is only one of several possible definitions of "Rainier." Others include Prince Rainier of Monaco, and the towns (cities?) of Rainier, Oregon; Rainier, Washington; and Mount Rainier, Maryland. "Rainier" may also mean "Characterized by, full of, or bringing rain." The Internet search results were unconvincing.

Guess Who?

In summary, it is clear that term “Rainier” is broader and potentially more inclusive than the mark MT RAINIER for which applicant was granted a Notice of Allowance. Accordingly, we have no doubt that the mark “would have to be republished after the alteration in order to fairly present the mark for purposes of opposition” in accordance with the test set up by our precedent.

And so the Board affirmed the denial of the amendment "as a 'material alteration' under 37 CFR §2.72."

TTABlog comment: Doesn't "rainier" also mean "more rainy," as in the State of Washington?

Text Copyright John L. Welch 2010.

Ruling that TTAB Misapplied Section 2(e)(3) Test, District Court Reverses TTAB's "GUANTANAMERA" Decision

In a review by way of civil action, brought under 15 U.S.C. Section 1071(b)(1), the U.S. District Court for the District of Columbia reversed the TTAB's decision in Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) [precedential]. The Board had found the mark GUANTANAMERA for cigars to be primarily geographically deceptively misdescriptive under Section 2(e)(3). [TTABlogged here]. The federal court ruled that the Board "erred as a matter of law in applying the materiality requirement" of Section 2(e)(3) of the Trademark Act. Guantanamera Cigar Co. v. Corporacion Habanos, S.A., Civil Action No. 08-0721 (RCL) (August 5, 2010 D.D.C.).

Opposer's cigars
The district court followed the CAFC's decision in In re Spirits International, N.V., 90 USPQ2d 1489 (Fed. Cir. 2009) [precedential], which vacated a Board decision that had found MOSKOVSKAYA to be primarily geographically deceptively misdescriptive of vodka. The CAFC ruled that the Board had improperly applied the materiality test because it failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived by the mark. [TTABlogged here].

The district court ruled that, under Spirits, it must be shown that "a significant portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

The TTAB decided the GUANTANAMERA case before the CAFC's decision in Spirits, and did not make any findings regarding a "'substantial portion' of materially deceived consumers."

Spirits plainly demands more than a finding of Cuba’s reputation for high quality cigars. In Spirits, Moscow’s renown reputation [sic] for vodka was not enough to affirm the TTAB’s legal conclusion; likewise, Cuba’s renown reputation for cigars is not enough in this case.

Defendant Habanos argued that there are millions of Spanish-speakers in the USA, that the English speaking public recognizes "Guantanamera" to mean Guantanamo, Cuba, and that Plaintiff targeted Spanish-speaking consumers.

Nevertheless, this evidence fails to determine that a substantial proportion of the target audience would be deceived into purchasing the cigars because of the false goods-place association. Habanos never introduced evidence that suggested material deception of a substantial proportion of the relevant consuming public.

And so the district court remanded the case to the TTAB for proper application of the materiality test under Section 2(e)(3).

TTABlog comment: What evidence does Opposer need to show that deception would occur because of the false-goods place association? How would it establish that a "substantial portion" of the cigar-smoking population would believe that GUANTANAMERA cigars come from Cuba? Would it need a survey?

What would an Examining Attorney have to show in a Section 2(e)(3) refusal? [Note that when the MOSKOVSKAYA case was returned to the Examining Attorney, the refusal to register was withdrawn and the case passed to publication.] Would it suffice to show that the term GUANTANAMERA is used in English-language media in reference to the place in Cuba?

Since the GUANTANAMERA case was tried before the Spirits decision came down, should the Board re-open the testimony periods to allow the parties to submit additional evidence regarding materiality?

Text Copyright John L. Welch 2010.

Pamela Chestek Comments on "ZYTNIA" Ownership Issue

Pamela Chestek, ip ownership expert and publisher of the Property, intangible blog, comments here on the ownership issue raised in the Board's recent decision in Slaska Wytwornia Wodek Gatunkowtch “Polmos” SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (July 27, 2010) [not precedential]. [TTABlogged here].


The Board tossed out Petitioner Slaska's fraud claim directed to Respondent's asserted ownership because the circumstances were murky enough that Slaska was unable to prove fraud "to the hilt."

Pamela explores this question about the ownership issue: "What if the manufacturer [Slaska] didn't have to prove fraud, just incorrect ownership?" Who would win on the ownership issue?
.

New TTABlog Trademark Jobs Posting

Former PTO Examining Attorney and large law firm associate seeks law firm or corporate position in the Washington, DC or Baltimore areas. Extensive experience in trademark clearance, registration, and enforcement. Has managed large global trademark portfolios for leading organizations in the fields of music, television and film, computer software and hardware, automotive parts, tool and die, fashion, food, pharmaceuticals, travel, publications, financial, educational, and business services in over 100 different countries. Send inquiries to John L. Welch to arrange for an introduction.

TTAB Reverses 2(d) Refusal of "HEARTWORKS" Despite Substantial Identity of Cited Mark

In a heartwrenchingly mundane case, the Board reversed a Section 2(d) refusal to register the mark HeartWorks for “apparatus for measuring blood pressure, body fat, weight and pulse, namely, body and health monitoring machine for standard measurements, namely, weight, body mass index, body fat content, heart rate and blood pressure, to be operated by an individual in public indoor locations” and “wheelchairs; convertible wheel chairs,” finding it not likely to cause confusion with the registered mark HEARTWORKS for "medical equipment, namely, diagnostic workstations in the field of cardiology diagnostics, comprised of computer hardware and monitors, associated graphical user interface, and instruction manual sold in conjunction therewith." In re Takano Co., Ltd. Serial No. 77412149 (August 10, 2010) [not precedential].


Applicant Takano argued that its products are used in "health promotion facilities," like gyms, "where healthy persons want to use the measurement machine to enhance and maintain their health," whereas Registrant's goods are used by doctors or specialists for patients having cardiac problems.

The Examining Attorney relied on many website pages purporting to show the goods to be related. The Board agreed with Takano that Registrant’s products are sold only to entities in the business of diagnostic cardiology, and conclude that the evidence "fails to show that companies that make "sophisticated medical devices for hospitals or doctors' offices also make health monitoring machines for use in public places such as pharmacies, sports gyms and health clubs." The Board further found that the involved goods "will move through distinct channels of trade to substantially different classes of purchasers."


Finally, the Board noted that the involved goods are relatively expensive, and "the persons charged with decision making at these various enterprises would be fairly sophisticated purchasers."

In conclusion, while the marks are substantially identical, this is outweighed by the fact that there is no apparent relationship between the respective goods, there are distinct channels of trade, the salient goods are expensive and will be marketed to distinct groups of fairly sophisticated persons.

And so the Board reversed the refusal.

Text Copyright John L. Welch 2010.

Precedential No. 32: TTAB Finds Bands on Mag Rechargeable Flashlight Functional, Lacking in Acquired Distinctiveness

In a 61-page opinion, the Board resolved three consolidated oppositions involving two competing flashlight manufacturers. Two of the oppositions, one brought by each party, concerned likelihood of confusion between certain word marks, while the third featured the issues of functionality and acquired distinctiveness of a product design or configuration. Mag Instrument, Inc. v. The Brinkmann Corporation, 96 USPQ2d 1701 (TTAB 2010) [precedential].


Opposition No. 91163534: In the first opposition, Mag Instrument opposed Brinkmann's application to register the mark MAGNUM MAXFIRE for "hand-held portable lights, namely flashlights and spotlights," alleging likelihood of confusion with Mag's registered mark MAG-NUM STAR for flashlight bulbs.

The Board began by rejecting, as usual, the Morehouse defense pleaded by Brinkmann. Brinkmann pointed to its prior registration of MAGNUM MAX for "hand-held electric spotlights," However, the Board found that registered mark to be not "substantially identical" to the applied-for mark MAGNUM MAXFIRE, and the goods not "substantially the same," as required by Morehouse. [The Morehouse defense seems to be available only when you don't really need it: i.e., when you already have a registration for virtually the same mark and goods. -ed.]

Turning to the du Pont analysis, the Board found that the dominant element of each mark is MAGNUM, and therefore that the marks are "highly similar in appearance, sound and connotation, and that the similarities in the overall commercial impression engendered by the marks as a whole greatly outweigh the differences." As to the goods, the Board found them to be complementary and related.

Brinkmann pointed to the 25 years of use of its MAGNUM MAX mark without any incident of actual confusion, but MAG noted the difference in the Brinkmann marks and goods and the Board refused to extrapolate this lack of actual confusion regarding MAGNUM MAX forspotlights to the MAGNUM MAXFIRE mark for flashlights.

And so the Board found confusion likely and sustained this opposition.

Opposition No. 91164340: Brinkmann opposed Mag's application to register the mark MAG STAR for flashlights and flashlight accessories in view of the registered mark MAXSTAR for "electric lanterns".

Mag tried to use a "family of marks" argument in defense, contending that, because of the alleged fame of the "MAG" family of marks, consumers would understand that the product came from Mag. The Board, however, pointed out once again that the family of marks doctrine is not available as a defense in an inter partes proceeding.

Family of Marx
In sum, the Board found the marks "very similar" and the goods related. Ergo, it sustained the opposition.

Opposition No. 91164340: Brinkmann challenged Mag's attempt to register the product design mark shown below, for flashlights, the proposed mark consisting of "two bands that encircle the barrel of the flashlight." Brinkmann maintained that this configuration is functional, and if not, lacks acquired distinctiveness. The Board agreed on both counts.


Brinkmann contended that the ring design is "necessary to charge the flashlight and the reason that the charging feature works." The Board applied the Morton-Norwich factors, finding that the first three pointed in Brinkmann's favor. Mag urged that the mark consists of "two bands that are visibly contrasting from the rest of the flashlight," but the Board observed that there was no indication in the application that the bands contrast with the barrel of the flashlight.

The Board reviewed an expired utility patent and concluded that "the features of [the proposed mark] are fundamentally covered by the expired patent," and that this patent "discloses the utilitarian advantages of the underlying mark, i.e., the two bands."

As to the second factor, the Board found that Mag had touted "several advantages of the dual bands": "you can get 360 degree contact ... no matter how you place the flashlight in the charger." As to alternative designs, Mag offered only some theoretical possibilities and none included the 360-degree feature.

Finally, the evidence was inconclusive regarding whether the Mag design results in an easier of less expensive manner of production.

The Board concluded that the proposed mark is functional.

For purposes of completeness, the Board then considered Mag's Section 2(f) evidence of acquired distinctiveness, finding it inadequate. According to the Board, Mag had to show that "the primary significance of the two banks or recharging rings in the minds of the consumers is not the utilitarian parts of the flashlight but the source of the flashlight, in order to establish acquired distinctiveness." [Query: Couldn't it be both utilitarian and still be a source indicator? Are (de facto) functionality and acquired distinctiveness mutually exclusive? - ed.]

The Board once again pooh-poohed the probative value of form declarations. [Does the Board realize how hard it is to get anyone to sign even a form declaration, let alone expect the declarant to craft his or her own declaration? ed.] The Board also observed that only one of the declarants was an end consumer, the others being sales reps or employees of retail companies.

The Board further pooh-poohed Mag's indirect evidence - sales and advertising figures - particularly harping on what it found to be "most damaging" to Mag's case: the lack of "look for" advertising. [Trademark attorneys harp on this all the time, but do clients pay attention? No. -ed.]

And so the Board ruled that, in the alternative, Mag had failed to prove acquired distinctiveness for its proposed mark.

TTABlog comment: What if Mag files a new application to register contrasting bands. Would that survive a functionality challenge? Stir in some "look-for" advertising and there you have it.

Text Copyright John L. Welch 2010.

TTAB Reverses 2(d) Refusal, Sophistication of Purchasers a Key Factor

Despite the near identity of the marks, the Board reversed Section 2(d) refusals to register V-TEC (in standard character and stylized form) for "custom wheels for vehicles," finding the mark not likely to cause confusion with the registered mark VTEC for vehicles and engines. The care with which consumers purchase custom wheels, vehicles, and engines was a major factor in the Board's determination. In re Vision Wheel, Inc., Serial Nos. 77498758 and 77498755 (July 28, 2010) [not precedential].


The marks: Not surprisingly, the Board found the marks to be "very similar in sound, appearance, and commercial impression." As to connotation, Applicant Vision Wheel argued that the mark in the registration is always used with certain house marks of Honda (the registrant) to refer to certain engine technology, but the Board pointed out that it must consider the involved marks as they appear on the drawing pages, and in that view the marks have "no particular connotation distinct from each other."

Vision Wheel also asserted that the cited mark is weak because it "stands for descriptive wording." This, however, was an impermissible collateral attack on the registration; furthermore, an acronym is merely descriptive if it is "readily understood by relevant purchasers to be 'substantially synonymous' with the merely descriptive wording it represents or stands for." Although there was evidence that VTEC is an abbreviation for "variable valve timing and lift electronic," the evidence was insufficient "to deem this term so weak that the mere addition of a hyphen or stylization distinguishes the marks enough to obviate likely confusion."

And so the Board concluded that the similarities in the marks outweigh "any possible dissimilarity in connotation that may be perceived."

The goods: The Examining Attorney maintained that, in the field of land vehicles and related parts and accessories, the Board has consistently "upheld relatedness analysis determinations." She provided website evidence showing that Honda offers replacement wheels for vehicles, asserting that consumers who encounter Applicant's V-TEC mark on wheels would likely be confused, "given that these consumers would also encounter the VTEC mark on automobiles, especially factoring that car manufacturers produce and market many parts of new automobiles, including wheels, under the same or similar marks." The evidence also included excerpts from a website selling both custom wheels and refurbished OEM wheels.

Vision Wheel argued that the Examining Attorney did not provide sufficient evident to establish a prima facie case, that there is no per se rule that all automobile makers are original equipment manufactures of wheels and engines, and that consumers who purchase wheels or vehicle parts must first identify the proper year, make, and model of the vehicle.

The Board agreed with Vision:

We are not convinced by the limited evidence of record that automobiles and/or vehicle engines from the OEM are sufficiently commercially related to custom, aftermarket wheels such that confusion is likely. While the evidence shows that car manufacturers use their house marks on various parts of their automobiles and their factory replacement parts, it does not show that they use various product or secondary marks in such a ubiquitous fashion and there is no evidence to establish that VTEC is a house mark. The fact that one website may offer refurbished OEM wheels along with custom wheels does not establish that custom wheels and factory replacement wheels regularly travel in the same channels of trade. More importantly, this does not establish that automobiles and engines travel in the same channel of trade as custom wheels, and, in fact, the evidence shows that automobiles are sold through authorized dealer networks.

Moreover, the Board found that "the conditions of sale minimize the potential for confusion."

As the record shows each purchase of a wheel necessarily involves a careful process wherein a consumer must identify the year, manufacturer and model of a specific vehicle. In addition, automobiles and engines are very expensive items and custom wheels cannot be characterized as inexpensive general consumer items.

And so the Board reversed the refusals, concluding that the Examining Attorney had failed to make a prima facie case of likely confusion.

Text Copyright John L. Welch 2010.

TTAB Tosses Out Three Fraud Claims, Dismisses "ZYTNIA" Vodka Cancellation Petition

Does it seem to you, dear reader, that the TTAB decides an inordinate number of cases involving vodka? Here's another one, this with a twist of fraud. The Board dismissed a petition for cancellation of a registration for the mark ZYTNIA for "liquor," finding that Petitioner had failed to prove its three fraud claims "to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch “Polmos” SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (July 27, 2010) [not precedential].


Petitioner Slaska charged that Respondent Stawski committed fraud when it (1) failed to tell the PTO that "zytnia" is Polish for "rye," (2) claimed to be owner of the mark, although it is only an importer, and (3) stated a first use date it had no right to claim.

The Board first disposed of Respondent's affirmative defenses of laches and waiver. Those defenses are inapplicable in a proceeding based on fraud, because "it is in the public interest to remove registrations from the register when they were fraudulently obtained."

The Board next observed that "in order to prove fraud, a plaintiff must show that a statement was false, the falsity was intentional, and that the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven to the hilt with clear and convincing evidence."

Here, none of the record evidence dated back to the filing of the underlying application in 1992, and so Petitioner Slaska was forced to rely on indirect and circumstantial evidence to prove Respondent's intent to deceive.

First Use Date: Even if a claimed first use date is false, there is no fraud if the subject mark was in use at the time an application was filed. Petitioner Slaska did not assert that Respondent's mark was not in use as of the filing date, and so there was no fraud.

Ownership: Petitioner urged that, as the producer of the vodka, it owns the mark, and that Respondent Stawski is merely an importer and distributor. The Board noted that, because the challenged registration is more than five years old, it may be cancelled only on specific grounds enumerated in Section 14 of the Trademark Act. Ownership is not one of the specified grounds, and that's why Petitioner claimed fraud instead.

The evidence regarding ownership, however, was "hardly a model of clarity" and "raises almost as many questions as it answers." The underlying facts were largely not in dispute, but the legal consequences were.

The parties continue to do business with each other, Respondent supplies the recipe for the vodka and exercises quality control, and the labels state that the product is "produced for and imported by" Respondent. The Board found it "likely that the public believes that respondent is responsible for the vodka sold under the mark."

However, there was no agreement between the parties that "clearly defines ownership of the mark ZYTNIA in the United States." Absent an agreement, the presumption is that the manufacturer owns the mark.

[N]o witness has testified as to ownership dating back to the filing, and respondent’s state of mind at that time. Moreover, certain facts arguably rebut the presumption that petitioner owned the mark in the United States, but most certainly such facts make a finding of fraud untenable.

Even if Petitioner were to be found the owner of the mark, the issue here is fraud, and Petitioner failed to prove fraud to the hilt. "To find otherwise would require us to speculate, surmise or infer on the question of respondent's intent to deceive, which we are prohibited from doing."

Translation of ZYTNIA: The testimony and evidence regarding the meaning of "zytnia" was inconsistent and competing. "If nothing else, the record shows that there is no precise translation of the term." Moreover, there was no direct evidence of Respondent's intent to deceive by withholding any purported translation. And so, once again, Petitioner Slaska failed to prove this fraud claim to the hilt.

TTABlog comment: Well, it looks like the final curtain has come down on the TTAB's long-running "Fraud Follies." I just wish the Board could come up with a more modern metaphor than "to the hilt." Any suggestions?

Text Copyright John L. Welch.

TTAB Finds "THE FLYER" Not Generic for Advertising Shopper Services

In this yawner, Applicant Harte-Hanks convinced the TTAB that a "shopper" is not a "flyer," and so the Board reversed a genericness refusal of the mark THE FLYER for advertising services relating to shoppers. In re Harte-Hanks, Inc., Serial No. 77017666 (June 30, 2010) [not precedential].


As we know, the test for determining genericness involves two questions: what is the genus of the services? And is the applied-for term understood by the relevant public primarily to refer to that genus? See H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).

The Examining Attorney contended that the genus of the services is advertising flyer services, and that the relevant public understands the term "flyer" to refer to this type of advertising circular. Applicant argued that a flyer and a shopper are two different things.

The Board reviewed various dictionary definitions of "flyer," and agreed with Applicant that these definitions "fairly consistently refer to an advertising flyer as something 'small' or 'one-page' in length." The Examining Attorney's website evidence corroborated the Board's conclusion that a flyer is generally a single sheet.

Applicant provided dictionary definitions of "shopper that" made clear that an advertising shopper is a "newspaper." Those definitions were consistent with Applicant's website evidence. Moreover, past USPTO practice revealed that the terms "flyer" is, "at worst, merely descriptive of some publications and related services, but definitely not generic for shopper newspapers."

And so, the Board found the genus of services to be "creating advertising publications," or "providing direct mail advertising," or "publishing free family/community newspapers," or even just "publishing shoppers."

The Board then agreed with Applicant that "flyer" is not understood by the relevant public as primarily referring to the genus of services.

Rather, we find that even the evidence placed into the record by the Trademark Examining Attorney consistently describes publications that are named "flyers/fliers" as relatively simple, small leaflets, often handed-out, posted or inserted into a newspaper. By contrast, applicant is involved in providing direct mail advertising by publishing a much more complicated but free publication in the nature of a community newspaper containing substantially all advertisements with some limited news or editorial content – a publication known generically in the trade as a "shopper."

And so the Board reversed the refusal. Moreover, the Examining Attorney agreed that the mark, if not generic, had acquired distinctiveness, and so a registration will issue on the Principal Register.

Text Copyright John L. Welch.

WYHA? TTAB Affirms 2(d) Refusal in Two-Page Opinion

In what may be its shortest Section 2(d) opinion ever, the Board affirmed a refusal to register the mark US CANTEEN & Design (below) for "non-leaching metal water bottles sold empty," finding the mark likely to cause confusion with the registered mark USCANTEEN for "plastic and metal water bottles sold empty." Would you have appealed? In re USCANTEEN INC., Serial No. 76695792 (July 30, 2010) [not precedential].


Let's cut to the chase. The substantive part of the Board's decision is contained in a single sentence:

We affirm the refusal to register inasmuch as (i) the goods are legally identical and (ii) the marks are identical as to sound and substantially the same as to connotation and commercial impression.

The Board then noted an oddity regarding this case:

It is troubling that applicant and registrant share the same address [58 School Street, Glen Cove, New York 11542], and at the time of the appeal, both applicant and registrant were represented by the same counsel – although this puzzling set of facts was neither noted by the Trademark Examining Attorney nor apparently recognized by applicant’s counsel at the time, Mr. Myron Amer.

Strange indeed. Anyway, the Board wasted no time in sustaining the 2(d) refusal.

Text Copyright John L. Welch 2010.

Precedential No. 31: Opposer Fails to Prove Priority, Non-Use, and Fraud in "BLACK BELT TV" Brouhaha

Opposer failed to land any of its three offensive thrusts - likelihood of confusion, non-use, and fraud - in its opposition to registration of the mark BLACK BELT TV & Design (shown below) for television programming in the field of martial arts [TV disclaimed]. Its Section 2(d) claim misfired when it could not prove that its common law mark BLACKBELT TV for Internet martial arts broadcasts, achieved acquired distinctiveness before Applicant's first date of use, and its other two claims were factually barren. Threshold.TV, Inc. and Blackbelt TV, Inc. v. Metronome Enterprises, Inc., 96 USPQ2d 1031 (TTAB 2010) [precedential].


Evidentiary rulings: The TTAB first took up several objections to the submission of testimony from a prior civil action between the parties. The Board observed that testimony from another proceeding may be introduced only pursuant to a stipulation between the parties, if accepted by the Board, or on motion granted by the Board. Under Rule 2.122(f), "testimony" means only trial testimony or a discovery deposition used as trial testimony.

Here, however, the deposition from the prior action was introduced as an Exhibit to trial testimony in this proceeding, and the trial witness authenticated the deposition transcript. Therefore the deposition was admissible and Rule 2.122(f) does not even apply.

Opposer objected, in its reply brief, to certain of Applicant's evidence. However, such objections must be raised in Opposer's trial brief, and cannot be held until reply. Therefore, these objections were waived.

Applicant's motion to amend first use dates: Applicant unsuccessfully attempted to claim first use dates earlier than those set forth in its application. Such a change requires clear and convincing evidence, but Applicant offered no evidence to support the new dates, and so its motion was denied.

Priority: Under the rule of Otto Roth, Opposer was required to show that it acquired trademark rights in BLACKBELT TV prior to Applicant 's first use date - its filing date for purposes here.

The Board found that BLACKBELT TV is merely descriptive of a feature of Opposer's services, and is not inherently distinctive. As to acquired distinctiveness, Opposer pointed to a ruling in the prior civil action in support of its claim, but the Board countered with the "law of the case" doctrine because the Board had already decided earlier in the proceeding that the court's ruling had no collateral estoppel effect.

Opposer also submitted evidence of acquired distinctiveness, but failed to submit sales figures, numbers of customers, surveys or third-party affidavits, and numbers of website visitors. Opposer's alleged 12 years of use of the mark did not alone establish secondary meaning. Moreover, Opposer did not submit evidence that its use of the mark was substantially exclusive.

The Board ruled that Opposer had not established acquired distinctiveness prior to Applicant's filing date, and so it dismissed the Section 2(d) claim on the ground of failure to prove priority.

Non-use: Opposer's only evidence on this point was its president's "obviously biased testimony" that he was "not familiar with applicant and its television programming services." That was not enough to avoid dismissal of this claim for lack of proof.

Fraud: Opposer's proof of fraud came nowhere near the hilt, as required by the case law, and so it too was dismissed.

TTABlog comment: Presumably the opposed application will now proceed to registration (absent a successful appeal). Should Opposer have included, in the alternative, a Section 2(e)(1) mere descriptiveness claim as to the phrase BLACK BELT TV?

Text Copyright John L. Welch 2010.

TTAB Affirms Refusal of "Closure Cap Configuration Mark" on Functionality and Nondistinctiveness Grounds

In an instructive 29-page decision, the Board affirmed a Section 2(e)(5) refusal to register the product configuration mark shown below (the "closure cap configuration mark") for "closures for medical collection tubes," finding it to be functional. In the alternative the Board found that the proposed mark lacks acquired distinctiveness. In re Becton, Dickinson & Company, Serial No. 77254637 (July 27, 2010) [not precedential].


Functionality: The Board applied the CCPA's Morton-Norwich factors in determining functionality.

(1) A utility patent owned by Applicant indicated that "several features of the closure cap configuration mark are indeed guided by utilitarian concerns." The circular opening in the top allows for a needle to puncture the cap and the ribs on the side provide a gripping surface. [What if the ribs had an unusual shape, like lightning bolts or waves? -ed.] This factor weighed in favor of functionality.

(2) Certain passages in Becton, Dickinson's advertising extolled the utilitarian advantages of several of the design features: the ridges, the special closure design that discourages use of a "thumb roll" opening technique; and the hooded closure. This factor, too, weighed in favor of functionality.

(3) There was no evidence on the factor of whether the design results from a comparatively simple or inexpensive method of manufacture, and so this factor was neutral.

(4) Applicant BD submitted evidence of three alternative designs, but the Board was not impressed. One design had ribs and a lip at the bottom of the cap that were similar in appearance to Applicant's proposed mark. The second was for a product that served a different purpose and so was irrelevant. And the third had many more similarities to BD's design than distinguishing features, and one would be "hard pressed" to characterize it as an alternative design. This evidence showed that:

collection tube closure caps are likely to have ribs or ridges on the side (to allow for a better grip) as well as an opening on the top of the cap (for insertion of a needle to access the specimen through the stopper). These features, as previously explained, are clearly utilitarian. Any variation thereof, e.g. the spacing or shape of the ridges, size of the lip, at least with respect to applicant’s closure cap configuration mark, appears to only be incidental to the overall adoption of those features.

And so the Board found this fourth factor to favor functionality.

The Board concluded that the overall design of the subject configuration "is dictated by utilitarian concerns." Any design features are "incidental" and are "hardly noticeable" in the overall composite.


Acquired Distinctiveness: Of course, a functional configuration is unregistrable, and it is not necessary to consider the issue of acquired distinctiveness, but the Board did so for the sake of completeness.

Applicant bore a "heavy burden" in this case because there was "no evidence to suggest that the configuration of collection tube closure caps (or any other types of caps) are frequently - or ever - used as source identifiers in the relevant industry." Moreover the features of the proposed mark, even if not de jure functional, do perform a function, "and thus consumers may be more inclined to perceive [them] as utilitarian in nature and not as a source identifier."

BD averred that it has used the subject design substantially exclusively and continuously since 1989, that sales have exceeded $80 million, that its annual advertising exceeds $1.5 million, that it features the cap prominently in advertising, and that the cap has won a design award. It also submitted declarations from eleven customers and users.

The Board, however, agreed with the Examining Attorney that this evidence "does not establish that the public views the product configuration as identifying the source of the product rather than the product itself." Long use is not necessarily probative, nor are sales figures without the context of market share. Nor do large sales figures mean that customers recognize the design as a source indicator.

Moreover, the Board noted that lack of "look for" evidence, which is an important consideration with regard to product configuration marks. In fact, none of BD's advertisements display the cap "in such a manner whereby consumers would regard the closure cap configuration as a source indicator." As to the design award, there was little information on which to reach a conclusion as to its significance.

Finally, as to the eleven declarations, they did not provide the shot in the arm that Applicant needed. "[N]early all of the declarations are identical in their relevant substantive paragraphs and do not appear to have been prepared in the signer's own words." [So what? Does the Board realize how hard it is, in the real world, to get anyone to sign a declaration, let alone get that someone to put it in his or her "own words." - ed.] While the declarations were considered, the Board found them insufficient to satisfy BD's high burden of proof.

And so the Board, in the alternative, found that the proposed mark has not acquired distinctiveness under Section 2(f).

TTABlog comment: This is one of many product configuration marks shot down by the Board. I think the Board did a better job than usual in keeping clear the distinction between de facto and de jure functionality.

Text Copyright John L. Welch 2010.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "COLLEGIATE COMMUNITY FINANCIAL" for Credit Union Services

In an enervating ruling, the Board affirmed a Section 2(e)(1) refusal to register the mark COLLEGIATE COMMUNITY FINANCIAL, finding it merely descriptive of "credit union services." Would you have appealed? In re Florida State University Credit Union, Serial No. 77415033 (July 12, 2010) [not precedential].


Examining Attorney Matt Einstein relied on dictionary definitions of the constituent words and on third-party registrations containing disclaimers of one or more of those words, in arguing that the subject mark immediately describes the intended users and the function of FSU's services: "the mark merely describes that applicant offers financial services to a collegiate community."

FSU argued that the mark is a coined term, that the three words are not normally used together, and that there is no evidence of any third-party use of the phrase COLLEGIATE COMMUNITY FINANCIAL. It pointed to several third party registrations in the financial services field, for marks that include at least one of the constituent words but with no disclaimer or 2(f) claim.

The Board sided with the Examining Attorney, concluding that "[t]he mark immediately describes the fact that applicant’s financial services, namely credit union services (obviously a type of financial service) are offered to a collegiate community, that is, a community affiliated with a college." It found the "competing evidence" of third-party registrations to be of little probative value, since each case must be decided on its own record. Moreover, the fact that FSU may be the first and/or only user of the mark "does not justify registration if the only significance conveyed by the term is merely descriptive."

Anyone marketing financial services, including credit union services, to a community affiliated with a college might well have occasion to use the words “collegiate community financial” to describe their services.

TTABlog comment: You certainly cannot call this a Seminole decision.

Text Copyright John L. Welch 2010.

TTAB Reverses Refusal to Register Cartier Watch Design, Finding 2(f) Evidence Sufficient

The Board reversed a refusal to register the product configuration mark shown immediately below, for watches, finding that Applicant Cartier's evidence was sufficient to establish acquired distinctiveness under Section 2(f). Survey results, a prior court decision, sales figures, media coverage, and Cartier's two prior registrations for similar design convinced the Board of the subject mark's registrability. In re Cartier N.V., Serial No. 77227767 (July 30, 2010) [not precedential].


The Board first observed that Cartier's rights "rest on the distinctiveness of the entirety of that design - not merely the sum of the protectability of its individual features." Cartier disclaimed "the Arabic number 12, the three dials on the face of the watch, and the hand on the face and the dials of the watch."

Cartier submitted the results of a confusion survey from another litigation. "A high percentage of respondents erroneously identified the knock-off watch as coming from Cartier." The Board found this to be "powerful evidence" under Section 2(f). Moreover, the acquired distinctiveness of Cartier's "Pasha" line of watches was confirmed in another litigation.

Substantial sales figures, numerous national advertisements,and unsolicited media articles also supported Cartier's 2(f) claim.

Finally, the existence of Cartier's registrations for the two design shown below was another factor in its favor.

These two prior registrations depict and claim substantially similar watch configurations. The current Trademark Examining Attorney has not made the argument that these earlier registrations issued in error. Yet consistency and logic make it difficult to argue that the instant set of seven elements is not distinctive when somewhat smaller subsets of five or six of precisely the same elements were deemed distinctive several years ago. If we were to affirm this refusal, applicant could well be handicapped in its efforts to deal with the threat of future knock-off artists after having gotten tripped up by a registration system that proved to be both unpredictable and inconsistent.

And so the Board reversed the refusal.

TTABlog comment: WYHRR? Would you have refused registration based on this record?

Text Copyright John L. Welch 2010.

TTAB Reverses Mere Descriptiveness Refusal of "LUA" for Computer Programs

Finding the Examining Attorney's evidence insufficient, the Board reversed a Section 2(e)(1) refusal to register the mark LUA for computer programs. The Examining Attorney contended that LUA is a programming language and therefore that the mark describes a feature of the goods. The Board, however, was not persuaded, having doubts about "the quantity and character of the evidence submitted by the examining attorney." In re Faculdades Catolicas, Serial No. 77423725 (July 21, 2010) [not precedential].


Relying on a dictionary definition of LUA ("an interpreted structured language designed for embedding into other applications") and on Internet excerpts (referring to LUA as a programming language), the Examining Attorney maintained that LUA "describes a feature or purpose of the identified computer programs, namely,that the computer programs are written in or run on the LUA programming language, are for the development of software written in the LUA programming language and are for implementation of the LUA programming language."

Applicant argued that the cited websites refer to its own software and "others are not using their own 'LUA' computer operating programs – they are using Applicant’s LUA computing operating programs. …In fact, the mark, when it appears in searches, already refers to Applicant’s goods." [Emphasis in original].

The Board reversed, concluding that the uses cited by the Examining Attorney "predominantly refer to a single discrete computer programming language developed by Roberto Ierusalimschy, Luiz Henrique de Figueiredo, and Waldemar Celes, members of the Computer Graphics Technology Group at PUC-Rio, the Pontifical University of Rio de Janeiro, and currently made available to the public via the MIT License."

The Board distinguished this case from Loglan Inst., Inc. v. Logical Language Group, Inc., 22 USPQ2d 1531, 1533 (Fed. Cir. 1992), which held the term "Loglan" to be generic for a language. No such finding may be made on the evidence here.

Finally, the Board observed that "on a different record, such as might be adduced in an opposition proceeding, we might reach a different conclusion."


Text Copyright John L. Welch 2010.