Thursday, September 30, 2010

TTABlog Quarterly Index: July - September 2010

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Section 2(d) - likelihood of confusion:

Section 2(e)(1) mere descriptiveness:

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

Section 2(e)(5) - functional:

Section 2(f) - Acquired distinctiveness:

Section 10 - Improper Assignment:

Abandonment:

Dilution:

Failure to Function:



Fraud:

Genericness:

Lack of Bona Fide Intent:

Mutilation/Material Alteration:

Ownership:

Priority of Use:

Standing:

Use in Commerce/Drawing/Specimen of Use:

TTAB Discovery/Evidence/Procedure:

CAFC Decisions:

CAFC Oral Arguments:

Recommended Reading:



Other:


Text and photos © John L. Welch 2010.

posted by John L. Welch @ 9/30/2010   0 comments

Test Your TTAB Judge-Ability: Are These Two "CEMENTO & Design" Marks Confusingly Similar for Clothing?

Applicant Mario Dimiccoli sought to register the mark shown on the left, for various clothing items. The mark was refused registration under Section 2(d) in view of the registered mark shown on the right, for overlapping clothing items. Dimiccoli appealed. Would you affirm or reverse? In re Dimiccoli, Serial No. 79059011 (September 24, 2010) [not precedential].


The Board first considered the question of "whether the doctrine of foreign equivalents is applicable."

In this case, it is inappropriate and unnecessary to invoke the doctrine of foreign equivalents. Both marks consist of wording in English and Italian. However, the foreign wording in each mark is unlikely to be translated.

Moreover, even if the foreign wording is translated, "the identical portions of the two marks is CEMENTO, which means 'cement' in Italian and looks very much like the English word 'cement.' *** As a result, our analysis of the similarity or dissimilarity between the marks is analogous regardless of whether the marks are likely to be translated."

The Board found that the marks in their entireties were "notably dissimilar in appearance and sound." As to overall commercial impression, "the term CEMENTO in each mark may convey the notion that the clothing items in question are durable and strongly made. However, if the CEMENTO ARMATO portion of applicant’s mark is perceived as a name, this connotation is unlikely to occur to viewers of applicant’s mark. Thus, the possible suggestion of durability present in registrant’s mark and perhaps present in applicant’s mark is not sufficient to overcome the differences in their appearance, sound and, to some viewers, their connotation."

And so the Board found no likelihood of confusion, and it reversed the refusal.

TTABlog commento: I see no concrete reason why the word CEMENTO wouldn't stick in the mind of the consumer and thus cause confusion. What about the oft-cited rule that marks are not to be compared side-by-side? Of course, when you put the marks next to each other the differences are apparent. But what if you saw one mark today and the other a week from today? I think the CEMENTO part would catch your eye.

Text Copyright John L. Welch.

posted by John L. Welch @ 9/30/2010   2 comments

Wednesday, September 29, 2010

TTAB Finds "ESCAPE" Confusingly Similar to "THE GREAT ESCAPE" for Golf Clubs

Applicant King Par got roughed up in its attempt to escape a Section 2(d) refusal of the mark ESCAPE for golf clubs. The Board affirmed the refusal, finding the mark likely to cause confusion with the registered mark THE GREAT ESCAPE, also for golf clubs. It turns out that King Par probably chose the wrong course for its challenge. In re King Par Corporation, Serial No. 77488735 (September 14, 2010) [not precedential].


The underlying factual scenario is rather interesting. King Par had a registration for the mark ESCAPE for golf clubs, and it blocked the application that ultimately resulted in registration of THE GREAT ESCAPE. The applicant for THE GREAT ESCAPE appealed, arguing no likelihood of confusion, but while the appeal was pending, King Par's prior, blocking ESCAPE registration was cancelled for failure to renew. By the time King Par filed the instant application, the registration for THE GREAT ESCAPE had issued, and it blocked the new King Par application. [Since King Par claims to have an earlier first use date, why didn't it petition for cancellation? - ed.]

The Board presumed that the goods of the parties, being identical, travel in the same channels of trade to the same classes of consumers. Examining Attorney Tasneem Hussain submitted evidence showing that golf clubs are not necessarily expensive, and the Board therefore presumed that the goods include relatively inexpensive items that may be purchased with nothing more than ordinary care. Moreover, as the Board noted later, even if the goods were expensive and purchased with some care, even careful purchasers may be confused when encountering identical products sold under similar marks.

Turning to the marks, the Board found them to be similar in sound and appearance. Moreover, they convey "similar ideas, namely that the club will allow a player to 'escape' a tough situation, as in escaping from a bunker (in the case of a sand wedge) or the rough (in the case of a 'trouble wood'). Registrant’s mark merely adds a superlative, 'THE GREAT,' to emphasize the quality of the 'escape' golf shot by using registrant’s club."

King Par maintained that consumers "will immediately associate 'THE GREAT ESCAPE' with the 1963 'award-winning' motion picture starring Steve McQueen," but the Board was unpersuaded, since the meaning of a mark must be determined in the context of the goods.


King Par pointed to the lack of evidence of actual confusion, but the Board noted that, in an ex parte context, this lack of evidence has little probative value (since the Registrant has had no chance to submit evidence). Moreover, there was no proof regarding the extent of use of each mark and thus the existence of meaningful opportunities for confusion.

Applicant also lamely argued that it is the prior user, but of course that constitutes an improper collateral attack on the cited registration. "Applicant (assuming that it is the prior user) has an adequate remedy, that is, a petition for cancellation. However, there is nothing to indicate that applicant has sought to cancel the cited registration."

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/29/2010   5 comments

Tuesday, September 28, 2010

Test Your TTAB Judge-Ability: Are "CRUSSH" for Restaurant Services and "CRUSH" for Beverages Confusingly Similar?

In this consolidated opposition and cancellation proceeding, Dr. Pepper/Seven Up challenged Krush Global's right to register the mark CRUSSH in standard character and design form for restaurant, snack bar, and cafe services. Plaintiff alleged a likelihood of confusion with its registered mark CRUSH for non-alcoholic beverages. Sure the marks are close, but what about the goods and services? Dr Pepper/Seven Up, Inc. v. Krush Global Limited, Opposition No. 91180742; and Cancellation No. 920484461 (September 13, 2010) [not precedential].


The Board found the word marks to be "highly similar," and it further deemed the word "CRUSSH" to be the dominant portion of the Defendant's design mark.


The key issue, then, was the relatedness of the involved goods and services. The Board noted for the umpteenth time that there is no per se rule that confusion is likely when "similar or even identical marks are used for food products and restaurant services." Jacobs v. International Multifoods Corp., 212 USPQ 641 (CCPA 1982). According to Jacobs, "something more" is required.

Plaintiff submitted evidence showing that "it is not uncommon for parties to utilize the same marks for restaurant services and food and beverage products." Examples are BEN & JERRY'S, BOB EVANS, CARVEL, DUNKIN' DONUTS, etc. Plaintiff also pointed out that it owns the marks STEWART'S and A & W, both used for beverages and restaurant services. Defendant's President testified that his company might venture into "bottled smoothies." [Open mouth, insert foot - ed.]

Finally, Plaintiff submitted several third-party use-based registrations that included both beverages and restaurant services.

The Board therefore concluded that the respective goods and services of the parties are related.

And so the Board ruled that confusion is likely, and it sustained the opposition to the design mark, and granted the petition to cancel the registration for the word mark.

TTABlog comment: I don't think these marks are confusingly similar, do you? Why would anyone in his or her right mind think that a restaurant with the unique spelling of CRUSSH is related to a soft drink? Come on, let's get real here!

I think the Jacobs "something more" requirement should be satisfied only if the marks are identical and the plaintiff's mark is particularly unique or famous. See, for example, the DELMONICO decision [TTABlogged here].

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/28/2010   10 comments

Monday, September 27, 2010

Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution

In a 57-page opinion, the Board dismissed this three-pronged opposition brought by Coach Services, Inc., owner of the registered mark COACH for leather goods and various other consumer items. Opposer contended that Applicant Triumph Learning's mark COACH, in standard character form and in the logo form shown below, for educational test preparation materials would be likely to cause confusion with, or dilution of, Opposer's COACH mark. Thirdly, Opposer claimed that Triumph's mark COACH is merely descriptive of Triumph's goods. Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010) [precedential].


Standing re 2(e)(1): Applicant Triumph argued that Opposer does not have standing to bring a mere descriptiveness claim because Opposer did not assert the "right or a potential need to use the word 'Coach' descriptively." The Board, however, ruled that Opposer nonetheless has a real interest in preventing the registration of Triumph's marks, and therefore has standing.

Section 2(d): The Board first found Opposer's mark COACH to be famous for purposes of likelihood of confusion, based in part on annual sales of $3.5B and advertising expenditures of $10-60M per year. However, fame proved to be not enough for victory.

The Board found the involved goods not to be similar or related in any way, and the channels of trade to be distinct. However, it recognized that there may be some overlap in classes of consumers: namely, students and parents of students.

Most importantly, the Board deemed the marks to be "different in their connotations and commercial impressions," a fact that the Board found "critical in this case."

Opposer’s COACH mark, when applied to fashion accessories is clearly either arbitrary or suggestive of carriage or travel accommodations (e.g., stagecoach, train, motor coach, etc.) thereby engendering the commercial impression of a traveling bag (e.g., a coach or carriage bag). On the other hand, applicant’s COACH marks call to mind a tutor who prepares a student for an examination.

And so the Board concluded that Triumph’s COACH marks "are not similar to opposer’s COACH mark."

Balancing the relevant du Pont factors, the Board found confusion unlikely, and it dismissed the 2(d) claim.


Dilution: The Board again began with the issue of fame, noting that "[f]ame for dilution requires a more stringent showing" than fame for Section 2(d) purposes. Quoting the TTAB's seminal Toro decision:

the owner of a mark alleged to be famous must show a change has occurred in the public’s perception of the term such that it is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods or services. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1180-1181.

Reviewing Opposer's evidence, the Board found that it was insufficient to prove fame for dilution purposes. Opposer's brand awareness study was of "dubious probative value," its media evidence failed to show widespread recognition in the general populace, and its evidence of sales and advertising expenditures was limited to a single year.

While lack of fame was enough to deep-six the dilution claim, the Board proceeded to plow through the other dilution factors. It first found that Opposer failed to prove that its mark became famous before Triumph's first use date. It next found that the marks are not "essentially the same," as required for dilution. And there was no evidence that Triumph intended to create an association with Opposer's mark. Balancing all the relevant factors, the Board found no likelihood of dilution by blurring.

Opposer's claim of dilution by tarnishment also proved to be a dud because there was no evidence "suggesting that opposer's mark will suffer any negative association by applicant's use of its marks."

2(e)(1) Mere Descriptiveness: The Board found that "Coach" is merely descriptive of "educational materials used for preparing for standardized tests." The dictionary definition of the word and its use in the titles of educational books and CDs led the Board to conclude that "Coach" directly informs consumers that the products are for instruction.

Triumph, as an affirmative defense, pleaded that its marks have acquired distinctiveness, based mostly on "substantial" revenues ("seven figures") and distribution of four million promotional pieces in 2008. The Board deemed COACH to be "not so highly descriptive that Applicant has the burden to show a concomitantly high level of acquired distinctiveness." Opposer argued that the only evidence of acquired distinctiveness was the testimony of Triumph's own witness, which was "self-serving and uncorroborated." The Board, however, noted that the witness was rigorously cross-examined and that her testimony was credible.

The Board found that Triumph's use of the COACH marks has been substantially exclusive for its goods, and that its marks have "made an impact on the purchasing public." Therefore, it ruled that Triumph's registrations will issue "with the appropriate notation."

TTABlog comment: Another instructive Judge Bergsman opinion. I did think that Triumph's evidence of acquired distinctiveness was a little weak, but then it deserved a break after all that heavy lifting in fending off Opposer's claims.

As to the standing issue, I just don't get it. Just because one competitor doesn't want another to get a registration, should that be enough for standing? I've railed about this before: e.g., see the Intel v. Emeny case [TTABlogged here], where Opposer Intel was found to have standing to challenge Emeny's bona fide intent when he applied to register the mark IDEAS INSIDE, even though Intel had dropped its Section 2(d) and dilution claims.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/27/2010   0 comments

Friday, September 24, 2010

Precedential No. 37: TTAB Says Filing of Summary Judgment Motion Does Not Automatically Suspend Proceeding

On remand from the CAFC, the Board ruled that Rule 2.127(d) does not provide for an automatic stay of a proceeding when a party files a motion for summary judgment. "Rather, only an order of the Board formally suspending proceedings has such effect." As a consequence, the Board again granted Super Bakery's petition for cancellation as a sanction against Respondent Benedict for failing to comply with a Board discovery order. Super Bakery, Incorporated v. Ward E. Benedict, 96 USPQ2d 1134 (TTAB 2010) [precedential].


Benedict, appearing pro se, was twice ordered by the Board to respond to Bakery's discovery requests. One day before his responses were due (the second time, and twenty months after the discovery requests were served), Benedict filed a motion for summary judgment. Eighteen days later, the Board issued a suspension order pending determination of the summary judgment motion.

Bakery then filed a response to the summary judgment motion and a motion for sanctions, asking the Board for judgment under Rule 2.120(g). The Board granted the sanction motion, entered judgment against Benedict, and denied the summary judgment motion as moot.

Benedict appealed to the CAFC, which (here) vacated the Board's decision and remanded the case for consideration of the applicability of Rule 2.127(d).

The Board ruled that "[t]he mere filing of a motion for summary judgment (or any other motion which is potentially dispositive of a case) does not, however, automatically suspend a proceeding. *** Rather, only an order of the Board formally suspending proceedings has such effect."

Here, because the Board's suspension order was not issued until March 30, 2009, respondent was still obligated to respond to petitioner’s discovery requests, as ordered, by the March 13, 2009, deadline set by the Board. The Board observed that, in certain situations, the filing of a motion for summary judgment may serve as good cause for not responding to discovery requests. But not this time:

Rather than providing justification for the failure to comply with the Board’s order, the filing of respondent’s clearly meritless motion for summary judgment just one day before respondent’s discovery responses were due can only be viewed as an effort to further obstruct petitioner’s rights to obtain discovery under the Board’s rules, the Board’s order compelling discovery, and the Board’s order granting discovery sanctions.

The Board recognized that the sanction of judgment was harsh, but "Respondent has been afforded multiple opportunities to comply with the Board’s discovery rules and orders, but has not done so. *** There is no reason to assume that, given additional opportunities, respondent will fulfill his obligations as a party to this proceeding."

And so the Board again entered judgment against Respondent Benedict.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/24/2010   1 comments

Thursday, September 23, 2010

Test Your TTAB Judge-Ability: Are These Two Design Marks for Software Confusingly Similar?

Of course they are, right? Not so fast there, buddy! It took the Board 67 pages to explain why it affirmed the Section 2(d) refusal of the mark on the left, for business software and computer programming services, in view of the registered mark shown on the right, for accounting software and computer services. Applicant Qliktech fired one argument after another, but none hit the target. In re Qliktech International AB, Serial No. 79054312 (September 20, 2010) [not precedential].


The Marks: The Board found the differences in the marks to be "too slight to distinguish the mark in terms of overall appearance." Qliktech that its mark would be recognized as "iQ" for various reasons, none of which the Board bought. Applicant also cited several third-party registrations, but the Board found them of no probative value.

The Goods: Qliktech asserted that its actual software product are quite different from those of the registration, but the Board as usual observed that those differences are not reflected in the identification of goods in the application. At a minimum, they are "complementary products." Qliktech's software, "as identified in the application, performs functions that are related to 'accounting' functions."

Channels of Trade and Purchasers: In brief, the Board found that the goods would travel in the same channels of trade to the same purchasers, including small business owners.

Conditions of Purchase: The Board must look to the "least sophisticated purchaser of the goods" -- small business owners who would exercise only a normal degree of care. Qliktech did not present any evidence to prove a heightened degree of care. In any case, even sophisticated purchasers are not immune from source confusion when encountering similar marks on similar goods.

The Board therefore affirmed the refusal with regard to the Class 9 goods.

The Services: Reviewing the services as recited in the application and registration, the Board found some of them to be overlapping and thus legally identical. However, some of the service might be purchased with "a degree of care" because, unlike the class 9 products, they would appear to be customized to meet the needs of the particular customer.

Nonetheless, weighing all the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal as to the Class 42 services.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/23/2010   0 comments

Wednesday, September 22, 2010

TTAB Finds "THE FITNESS SNEAKER" Generic for ... Guess What?

If you guessed "footwear, namely, sneakers with structural features to contribute to fitting comfort during use thereof," you hit the nail with your head. The Board affirmed a refusal to register the designation THE FITNESS SNEAKER for those goods on the ground of genericness. In re Men's Fitness Unlimited, LLC, Serial No. 76640536 (August 30, 2010) [not precedential].


The Board found the genus of goods to be "sneakers." "The fact that the sneakers are structured to fit a certain way does not change the nature of the goods as sneakers or the name of the category of goods as sneakers."

Examining Attorney Nakia D. Henry submitted definitions of "fitness" and "sneaker," as well as printouts from websites "showing that sneakers used for fitness activities are typically referred to as a 'fitness sneaker,' and that they are advertised and promoted by others as a 'fitness sneaker.'" Other sneaker producers use the term "fitness sneaker" to designate the type of sneaker.

It is clear from the evidence that 'fitness sneaker' is a generic term, commonly used by others and understood by the public to denote a particular type of sneaker. The genus of applicant's goods, which is defined as "sneakers," albeit sneakers structured to fit a certain way, encompasses the type of sneaker known as a 'fitness sneaker,' and thus identifies at least one category of sneaker.

The Board observed that the addition of THE to FITNESS SNEAKER does not avoid genericness. And even though a literal reading of the CAFC's American Fertility case would require proof of use of THE FITNESS SNEAKER as a whole to establish genericness, "we do not believe that American Fertility can be read to allow an applicant to take a clearly generic term and add to it a non-source identifying article such as 'the' or 'a' and thereby create a trademark."

Applicant feebly argued that FITNESS refers to how the sneakers "fit," but the Board pointed to the lack of evidence the consumers would give the term any such meaning. Moreover, Applicant's own declarant referred to the physical fitness of its customers.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/22/2010   0 comments

Tuesday, September 21, 2010

TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of "ROUGE TOMATE" for Fruit and Vegetable Juices

How's your French holding up? Today we look at the Board's affirmance of a Section 2(e)(1) mere descriptiveness refusal of ROUGE TOMATE for various non-alcoholic beverages, including fruit and vegetable juices. The Examining Attorney maintained that the mark describes a feature, characteristics or ingredient of the goods because several vegetable drinks and juices are derived from red or ripened tomatoes. The Board affirmed, but on the ground that consumers who understand French will immediately understand the mark ROUGE TOMATE (or “tomato red”) as describing the color of the identified juices. In re LE CHÂTEAU DE MA MERE, société anonyme, Serial No. 79975049 (September 3, 2010) [not precedential].


Applicant asserted that the mark should properly be translated as "tomato red," and that "the shade [of color] conveyed by the mark is one connected with passion, pleasure and joy – all of which are emotions applicant would like to conjure through use of the mark." The Examining Attorney contended that another translation is "red tomato," which is an ingredient of tomato juice and other beverages.

The Board accepted Applicant's translation of the mark but nonetheless affirmed the refusal.

[B]ased on the undisputed evidence showing that tomatoes are used as ingredients in fruit and vegetable juice drinks, it stands to reason that the color of such drinks will likely and aptly be described as “tomato red.” That is, consumers who understand French and encounter applicant’s mark on vegetable and fruit juices will immediately understand the mark ROUGE TOMATE (or “tomato red”) as describing the color of the identified juices.

The Board recognized that its rationale for affirming the refusal differed from the reasoning of the Examining Attorney, but "it has long been held that the Board is not obliged or confined to adopt the reasoning of the examining attorney in affirming a statutory refusal to registration."

The Board observed that, given Applicant's translation of the mark as "tomato red," it need not reach the question of whether consumers would also translate the mark as "red tomato."

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/21/2010   0 comments

Monday, September 20, 2010

ABA Webinar Sept 29th: "The Nuts and Bolts of Trademark Trial and Appeal Board Practice"

The American Bar Association Section of Intellectual Property Law and the ABA Center for Continuing Legal Education will host a webinar on Wednesday, September 29th from 11:30 AM to 1:00 PM, entitled "The Nuts and Bolts of Trademark Trial and Appeal Board Practice." That will give you time to read the ABA's new book, "A Legal Strategist's Guide to TRADEMARK TRIAL AND APPEAL BOARD PRACTICE."


Registration for the webinar may be accomplished here. Says the ABA:

Join our expert faculty as they discuss the most often encountered aspects of Trademark Trial and Appeal Board (TTAB) practice including pleadings, discovery, motion practice, and ethical concerns.
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posted by John L. Welch @ 9/20/2010   0 comments

Friday, September 17, 2010

ABA Publishes "A Legal Strategist's Guide to TRADEMARK TRIAL AND APPEAL BOARD PRACTICE"

You will want to get your mitts on the new ABA book, A Legal Strategist's Guide to TRADEMARK TRIAL AND APPEAL BOARD PRACTICE, edited by Jonathan Hudis. "A welcome resource for both the TTAB tyro and veteran, this book combines legal expertise with practical insights. Well-organized and plentifully annotated, it will make us all better TTAB practitioners." [quoting myself].


From the ABA website:
An essential resource for every trademark practitioner's library, this book is a first-of-its-kind treatment of U.S. Trademark Trial and Appeal Board Proceedings. This book describes and provides an analysis of, each facet of Board practice, including:
  • Inter partes proceedings (such as Oppositions, Cancellations, and Concurrent Use Proceedings)
  • Ex parte appeals to the Board from refusals to register marks
  • Disclosures and discovery
  • Motion practice
  • Presenting one's evidence at trial
  • The use of experts
  • Briefs on final hearing and oral argument
  • Appeals from final TTAB decisions
  • Settlement, alternative dispute resolution, and accelerated case resolution
  • Ethical issues when practicing before the Board
Bonus: Each chapter includes a valuable checklist of items that the practitioner should bear in mind during each stage of a Board proceeding.

posted by John L. Welch @ 9/17/2010   1 comments

Thursday, September 16, 2010

Precedential No. 36: TTAB Refuses to Find Fraudulent Intent Where Applicant Relied on Advice of Counsel

If you needed confirmation of how hard it will be to prove fraud post-Bose, then here's a case for you. The Board dismissed Brady Bunte's petition for cancellation in this consolidated proceeding, finding that he had failed to prove fraud "to the hilt." Although MCI knowingly included in its application goods for which its mark CABO PRIMO & Design had never been used, it did so after obtaining advice of counsel, and therefore the Board refused to find the requisite deceptive intent. M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544 (TTAB 2010) [precedential].


Fraud: The Board found that MCI "made a false representation when it filed its application to register the CABO PRIMO and design mark and claimed use on products other than burritos," and that it did so "to obtain as broad a scope of protection as possible." However, it had sought the advice of counsel and discussed the list of goods it wanted to include in the application.

Because MCI filed its application to register the CABO PRIMO and design mark with the advice of counsel, the overly expansive description of goods, while a false statement, falls short of constituting a fraudulent statement which carries with it an actual or implied intent to deceive the USPTO.

The Board pointed out that "there is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its CABO PRIMO and design mark."

The Board refused to infer intent to deceive the USPTO without some factual basis.

[I]t was incumbent upon Bunte to establish such a factual basis by, for example, eliciting further testimony as to the actual advice MCI received when it “discussed with counsel” the list of goods it intended to include in the application and whether or to what extent MCI relied on such advice. *** Bunte failed to show, by direct evidence, that MCI intended to deceive the USPTO or, by indirect evidence, that the Board could draw no reasonable conclusion other than that MCI intended to deceive the USPTO.

Although it denied the fraud claim, the Board ordered that the CABO PRIMO registration be restricted to burritos.

Likelihood of confusion: The Board then turned to MCI's petition to cancel Bunte's registration for the mark CABO CHIPS for corn chips [CHIPS disclaimed]. MCI alleged a likelihood of confusion with MCI's registered marks CABO PRIMO and design, LOS CABOS and design, and CABO CLASSICS for various Mexican food products.


The Board found the word CABO to be the dominant portion of three of the four involved marks, and as to the fourth, LOS CABOS, the word CABOS is highlighted by the word LOS. It concluded that the CABO CHIPS mark "is similar to all three of MCI’s marks in terms of appearance, sound, meaning and commercial impression."

As to the goods, the Board noted that MCI’s Mexican foods and Bunte’s corn chips are complementary products. "When such products are sold under similar marks, consumers are likely to mistakenly believe that they [the products not the consumers - ed.] emanate from the same source."

Because the involve registrations are unrestricted as to channels of trade, the Board concluded that goods move in the same channels and are sold to the same classes of consumers. As to the care with which the goods are purchased, three of the involved marks are for ordinary consumer products that may be purchased on impulse and without much care or deliberation. As to the fourth, the goods of the LOS CABOS registration are sold in bulk to distributors for sale to institutional purchasers. However, evidence was not developed as to the degree of care exercised by these purchasers, and so this factor was neutral as to the LOS CABOS mark.

Balancing the du Pont factors, the Board found confusion likely and it granted the petition for cancellation of the CABO CHIPS registration.

TTABlog comment: My first reaction is that this "advice of counsel" defense is going to close the book on most fraud claims - at least those not involving pro se applicants. As to the latter, they will just claim innocence, inadvertence, and/or ignorance of the law. So it looks like the "Golden Age of Fraud" at the TTAB has now passed.

Suppose the attorney signed the application in the first place? Seems as though, to prove fraud, one would have to find out what the attorney was told. Suppose the attorney never inquired and took the Applicant's list of goods without question? Suppose the attorney did inquire and was told that the mark was in use on all the goods? The latter case seems like fraud to me. The former? Not so clear. But highly fact dependent.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/16/2010   6 comments

Wednesday, September 15, 2010

Two New Judges Join TTAB, Bringing Total to Nineteen

The USPTO has announced the selection of Frances S. Wolfson and Angela Lykos as Administrative Trademark Judges at the Trademark Trial and Appeal Board.


  • Angela Lykos has been an interlocutory attorney at the TTAB for almost ten years. Currently, she is leading the Board's effort to revise the TTAB manual of procedure (TBMP). Before joining the Board, Ms. Lykos spent many years as a trademark examining attorney and in private practice. She completed her undergraduate work at the Johns Hopkins University, earned a master's degree from the Hopkins School of Advanced International Studies, and a law degree from Duke University Law School.

  • Frances Wolfson has served as an interlocutory attorney at the TTAB for the last eleven years. Prior to joining the Board, she spent a number of years as a trademark examining attorney. Before joining the USPTO, Ms. Wolfson was in private practice and in-house counsel positions. She earned her undergraduate degree from the University of California, Santa Barbara and her law degree from the law school of the University of California at Los Angeles.

The complete roster of TTAB judges, now numbering 19, may be found here.
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posted by John L. Welch @ 9/15/2010   0 comments

Fame of "LE CORDON BLEU" Brings TTAB 2(d) Victory Over "CORD ON BLUE" for Cord Storage Units

Applicant Muffman's goose was cooked once the Board found Opposer's mark LE CORDON BLEU to be famous for educational services in the field of cooking. Fame plays a dominant role in the du Pont Section 2(d) analysis, and the Board proceeded to find a likelihood of confusion with Muffman's mark CORD ON BLUE for "general purpose non-metal storage units for use in hanging cards (sic), namely, stretch cords, electrical cords and bungie (sic) cords." Le Cordon Bleu International v. Muffman Products, LLC, Opposition No. 91155779 (August 30, 2010) [not precedential].


Fame: The Board found fame based on Opposer's submission of 74 articles from various U.S. publications referring to LE CORDON BLEU as "the famous cooking school." The Board noted that the articles are hearsay, but concluded that "the references reflect the perception of the authors and that perception is conveyed to the readers." [That proves the mark is famous in the eyes of the public? - ed.]

Of course, famous marks are entitled to a broad scope of protection under Section 2(d), and all doubts as to likely confusion are to be resolved against the newcomer, "especially where the established mark is one which is famous."

The Marks: The Board observed that, "[a]lthough opposer's mark LE CORDON BLEU consists of French words, many Americans will not be aware of the French pronunciation, and will say the mark with an American accent." [Where's the proof for this? ed.] Therefore the marks should be considered identical in sound (except for the "Le").

The meanings of the marks are different, as are the commercial impressions. Opposer's mark suggests something of "high distinction." Muffman's mark, because of the fame of Opposer's mark, will call to mind the latter.

The Board concluded that the similarities in the marks outweigh the differences.

The Goods: Opposer has sold a wide variety of goods under its mark (e.g., tobacco products, clothing, tea, watches, cooking utensils, ovens, ranges, and cookers, and various household items). Given the fame of Opposer's mark, "consumers will logically suppose that applicant's goods are associated with, sponsored by, licensed by or somehow affiliated with opposer."


Trade Channels: Muffman's storage units and Opposer's products and services are general consumer items, they are available to all consumers. Applicant's products may be used in the home, and so the channels of trade for the involved goods and services may be the same. [This analysis is kind of weak, don't you think? - ed.]

Conditions of Sale: Applicant considers its goods to be "impulse" items, and because Opposer's mark is famous, "there is a greater likelihood of confusion because not only are impulse purchases subject to less care in general, but when a trademark or service mark is famous, consumers will exercise even less in making their purchasing decision." [There was no evidentiary support for this assertion; just a quotation from a prior decision. ed.]

Balancing the factors, the Board found confusion likely, and it sustained the opposition.

TTABlog comment: The Board declined to reach Opposer's dilution claim. Are the marks sufficient similar to support a dilution finding?

I find this decision unconvincing, particularly the part about the relatedness of the goods. It seems that Opposer got dilution-like protection without having to meet the higher standard for fame and for the substantial similarity of the marks.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/15/2010   2 comments

Tuesday, September 14, 2010

Test Your TTAB Judge-Ability: Are the Marks "FIRESIDE GLOW" and "FIRESIDE WARMTH" Confusingly Similar for Air Fresheners?

In this appeal from a Section 2(d) refusal, the Board found applicant's goods (air fresheners and deodorizers) to be partly identical to goods of the cited registration (air fresheners and deodorizers). There were no restrictions on the channels of trade, and so the Board deemed them identical. It then came down to the marks: is Applicant's mark FIRESIDE GLOW ["FIRESIDE" disclaimed] likely to cause confusion with the registered mark FIRESIDE WARMTH? What do you think? In re Pure & Natural Company, Serial No. 77153360 (August 30, 2010) [not precedential].


Applicant vigorously attacked the cited registration, which was registered under Section 44, first arguing that it should be accorded a narrower scope of protection than a use-based registration in the context of Section 2(d).

Applicant reasons that the scope of the cited registration should be limited because the mark was registered without a showing of use and, thus, the statute and underlying treaty obligation, give a foreign national an “unfair” advantage over U.S. applicants and registrants.

However, the cases cited by Applicant for its "fairness" argument were not on point, and none "sets legal limitations on a Section 44 application or registration based on any notion of “fairness” and it would be inaccurate to read such a factor into the Trademark Act."

Applicant next asserted that any doubt regarding likelihood of confusion should not be resolved in favor of a registration based on Section 44 "because of the inherent unfairness of permitting registration without a showing of use." Again, the Board found "no basis in law or precedent for this argument and we have not considered it further."

Finally, Applicant complained that the owner of the cited registration is a domestic entity who improperly asserted Section 44 to obtain its registration. The Board, however, agreed with the Examining Attorney that the validity of the cited registration is not at issue here.

Turning to the du Pont analysis, and particularly to the similarity or dissimilarity of the marks, Applicant submitted evidence showing that "fireside" is descriptive of a fragrance associated with the goods. Applicant did not dispute that "glow" and "warmth" are arbitrary terms in the context of the goods.

Comparing the marks in their entireties, the Board found them dissimilar.

Both second terms, “glow” and “warmth” suggest features of a fire, as described by applicant. *** At the same time, the terms “glow” and “warmth” have no significance in the context of the respectively identified goods in this case and, therefore, are clearly the dominant terms in the marks. Therefore, we find that applicant’s mark, FIRESIDE GLOW, is sufficiently distinguished from the cited registered mark, FIRESIDE WARMTH, by the second term in each mark.

And so the Board reversed the refusal.

TTABlog comment: Well, how did y'all do? I was a bit surprised by the outcome: it did not leave me with a warm glow.

I guess Applicant's attack on Section 44 had a beneficial effect. This case reminds me of why managers and coaches yell at umpires and referees: if you holler long enough about an umpire's strike zone, or about a referee's charging calls, you just might soften him or her up so that you eventually get a call in your favor when it comes to crunch time.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/14/2010   3 comments

Monday, September 13, 2010

Precedential No. 35: Amazon Spanked Again in TTAB Discovery Ruling

The Board was again displeased with the discovery antics of Opposer Amazon Technologies in its opposition to Jeffrey Wax's application to register AMAZON VENTURES for investment consultation services. Last year the Board issued a precedential ruling [TTABlogged here] concerning Amazon's improper, non-specific objections to Wax's discovery requests. Here, the Board issued rather mild sanctions against Amazon for failing to comply with the Board's 2009 Order requiring it to supplement its discovery responses. It also denied Amazon's motion for summary judgment on the issues of lack of bona fide intent and violation of Section 10 of the Act regarding a purported assignment of Wax's ITU application. Amazon Technologies, Inc. v. Jeffrey S. Wax, 95 USPQ2d 1865 (TTAB 2010) [precedential].


Discovery Sanction:In its November 4, 2009 decision, the Board said that Amazon was trying to "hide the ball" and had not laid "its cards on the table," warning Amazon (on reconsideration) that discovery "should not be treated as a shell game." Here, it found that some of Amazon's discovery responses "constituted a textbook 'document dump.'" Amazon produced a DVD containing some 31,000 pages of documents, without an index and not in chronological order.

Amazon claimed (to the Board's "surprise") that it does not have a database that would allow it to find its own trademark applications and registrations that identify finance-related services. In any case, the Board agreed with Applicant Wax that "under the circumstances of this case and given the discovery requests and responses before us, opposer’s burden in identifying certain of its own applications and registrations as meeting certain criteria is substantially less than applicant’s in this case, even if no database exists."

thousands of pages of opposer’s produced documents comprise the file histories of opposer’s applications, and while those file histories may arguably be tangentially related to opposer’s communications to applicant, identifying all of them, without an index, in response to Document Request No. 25 is an example of gameplaying rather than compliance with the Prior Order.

The Board concluded that Amazon's unindexed document production violated FRCP 34(b) . However, it declined to issue the ultimate sanction of judgment in Wax's favor "because opposer made substantial efforts to comply with the Prior Order in some respects." Instead it merely required Amazon to provide an index within thirty days, and to fully respond in narrative form to two interrogatories.

Lack of bona fide Intent: The opposed ITU application was originally filed jointly by Applicants Wax and Friedman in 2000. Friedman assigned his interest in the application to Wax in 2008. The business had no assets, no business plan, never paid taxes, and never advertised. Friedman testified that he never worked with Wax on any project, and that as of 2008, Friedman had no intent to use the mark. Wax provided declaration from third parties stating that he did provide consultation services under the mark. He further asserted that Friedman had been out of the business since 2001, and that the assignment was formally executed only when needed (in 2008).

The Board found that genuine issues of material fact exist regarding, at a minimum, "whether the original joint applicants, and the current applicant, had or have a bona fide intention to use AMAZON VENTURES for the identified services."

Section 10 Assignment: The Board ruled as a matter of law that Section 10 had not been violated by the "assignment" from Friedman to Wax. The Board observed that an "assignment" is defined as "[a] transfer or making over to another the whole of any property."

In this case, there was no transfer to “another,” as Mr. Wax was an original joint applicant and is now the sole remaining applicant.11 In fact, the “Trademark Assignment” in this case was more akin to a change in the type of entity which owned the application than to a traditional assignment of a mark from one unrelated party to another.

The Board noted that the purpose of Section 10 is to preclude "trafficking" in unused trademarks. Here there was no "trafficking."

In short, the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application, is more in the nature of a "relinquishment" of ownership rights by one of the joint owners than a true "assignment" to a different legal entity and, thus, it is not prohibited under Section 10 of the Trademark Act.

And so the Board ruled in Wax's favor on this prong of Amazon's summary judgment motion.

The Board then re-set that trial dates, preceded by a short discovery period to allow Wax to conduct follow-up discovery.

TTABlog comment: Good case to remember when you receive a "document dump" from your adversary.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/13/2010   2 comments

Friday, September 10, 2010

Erik Pelton Reports on September 2nd TPAC Meeting

Erik Pelton reports here on the September 2nd meeting of the Trademark Public Advisory Committee (TPAC). [Transcript of meeting here].


Concerning our favorite tribunal, Erik indicates that Acting Chief Judge Rogers provided the following items of interest:

  • Updates to the TTAB Manual of Procedure (“TBMP”) are continuing, and the revised TBMP will hopefully be publicly available in early 2011.

  • TTAB case filings are down (Third Quarter FY10 compared to Third Quarter FY09: Ex Parte Appeals down 20%, new Oppositions down 16%, new Cancellations down 15%).

  • TTAB case pendency continues to grow. Average length of trial cases going all the way to final decision which were decided in Q3 FY10 was 260 weeks [exactly 5 years], with a median figure of 183 weeks.

  • The TTAB may soon implement a pilot program regarding judge participation in settlement discussions. The pilot would involve those TTAB cases which have been suspended for settlement discussions for the longest periods of time.

For more details, see Erik's report.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/10/2010   0 comments

TTAB Decides Dispute Between Two Lubavitch Chassidic Factions over Kehot Logo

In this dispute between two factions of the Lubavitch Chassidic community, the Board dismissed an opposition to registration of the emblem shown below [the "Kehot logo"], for "books, magazines, charts, maps, and photographs on a variety of aspects of Jewish life." The Board concluded that Applicant is the owner of the logo, and that Opposer failed to prove any of its several theories in support of the opposition. Vaad L'Harotzas Sichos, Inc. v. Kehot Publication Society, a division of Merkos L'Inyonei Chinuch, Inc., Opposition No. 91156051 (August 30, 2010) [not precedential].


Opposer pursued two grounds for opposition: that the First Amendment bars the registration, and that Applicant is not the owner of the mark. Opposer also claimed that the Board does not have jurisdiction and that the dispute should be decided instead by the Beth Din of Crown Heights (a Jewish religious court).

Jurisdiction: Opposer contended that "applicant must have this matter settled by what is essentially alternative dispute resolution because the Rebbe, as president of applicant, bound applicant to do so." The Board, however, agreed with Applicant that Opposer waived its right to seek alternative dispute resolution through the Beth Din. Moreover, the issue was never raised in the notice of opposition, nor was it tried with the consent of Applicant.

First Amendment: The Board refused to consider this claim because it was neither pleaded in the notice of opposition, nor tried with Applicant's consent.

Ownership: Viewing the entire record, the Board found "ample support for the conclusion that Kehot Publication Society is a division of Merkos, and that Merkos is the owner of the KEHOT logo and is the proper applicant for this trademark. Put another way, opposer has not met its burden of proving by a preponderance of the evidence that Kehot is not a division of Merkos." Nor did Opposer prove that Merkos lost its rights in the KEHOT logo, or that Vaad obtained them.

Finally, Opposer argued in its brief that KEHOT is not a trademark, but represents something spiritual: namely, that the Rebbe has sanctioned the material identified by the logo. The Board, however, saw the Rebbe's actions in approving the use of the logo as being "no different from any other trademark holder."

Further, the record shows that both the Previous Rebbe and the Rebbe treated the KEHOT logo not as some spiritual or holy item. Rather, they each took the business steps that any trademark owner would take with respect to a trademark, including filing for protection of the mark under the laws of New York State.

The Board concluded that Opposer had failed to meet its burden of proof as to any of the theories that it advanced, and so it dismissed the opposition.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/10/2010   0 comments

Thursday, September 09, 2010

TTAB Reverses Refusal of "CORPORATE FUEL" For Business Advisory Services, Finding Disclaimer of "CORPORATE" Unnecessary

When this Applicant declined to comply with the Examining Attorney's requirement that the word "CORPORATE" be disclaimed in the mark CORPORATE FUEL for business advisory services, a refusal to register under Section 6(a) of the Act resulted. The Board, however, found the disclaimer unnecessary and it reversed the refusal. In re Corporate Fuel Partners, LLC, Serial No. 78705685 (August 27, 2010) [not precedential].


The Examining Attorney maintained that the term CORPORATE "describes the intended users of applicant." Applicant, on the other hand, asserted that the mark "as a whole creates a unique unitary phrase."

As there is no such thing as “corporate fuel,” Applicant’s unusual combination of the adjective “CORPORATE” to modify the noun “FUEL” creates a coined phrase which has no specific meaning other than to playfully hint to Applicant’s consumers that its services will provide the unique fuel or energy needed to launch them past their competitors.

The Board observed that no disclaimer is required if a mark is unitary: if it creates a single, distinct commercial impression. When the words comprising the mark create an incongruity, the mark is unitary.

[H]ere the words CORPORATE FUEL do create a single unitary phrase that is the name of an imaginary thing. The word CORPORATE does not stand alone creating its own separate commercial impression. Rather, consumers would receive the phrase CORPORATE FUEL as a play on actual types of fuel, like jet fuel or diesel fuel.

Finally, the Board pointed out that registration of the mark "cannot serve to preclude others from making fair use of the term CORPORATE in describing their services." It therefore reversed the disclaimer requirement.

Copyright John L. Welch 2010.

posted by John L. Welch @ 9/09/2010   0 comments

Wednesday, September 08, 2010

Prededential No. 34: TTAB Affirms Refusal to Register "Beer Glass and Stand" Packaging for Lack of Distinctiveness

In a 30-page opinion, the Board affirmed a refusal to register the alleged mark shown below for "beer," finding that it lacked both inherent and acquired distinctiveness. Applicant Brouwerij Bosteels contended that the mark -- consisting of a flask, flask holder/stand, scrollwork, and wording -- comprises unique and distinctive product packaging for its Pauwel Kwak brand of beer, but the Board saw it as a mere refinement of a common shape. Moreover, Applicant's proof of acquired distinctiveness fell quite flat. In re Brouwerij Bosteels, 96 USPQ2d 1414 (TTAB 2010) [precedential].

Pauwel Kwak

After some initial skirmishing over whether an open container may qualify as "packaging" for beer, the Board construed the goods to be "beer sold in restaurants, bars, pubs and the like," and it deemed the purported mark to be "trade dress in the nature of product packaging." The issues to be decided were "whether the alleged mark, i.e., the beer glass and stand with wording and scrollwork, is inherently distinctive or has acquired distinctiveness for beer sold in restaurants, bars, pubs and the like."

Inherent Distinctiveness: Examining Attorney Jennifer M. Martin submitted Internet web pages showing more than ten examples of products described as Yard, Half Yard, or Foot of Ale Glass with stand. The Board, applying the Seabrook test for packaging trade dress, concluded that the applied-for mark "is a mere refinement of a common Yard, Half Yard, or Foot of Ale glass with stand" and therefore "falls short of being inherently distinctive" for Applicant’s goods.

Acquired Distinctiveness: The Board agreed with the Examining Attorney that, because the alleged mark "is highly similar to a specific type of glass and stand for serving and holding beer," Applicant's claim of twenty-five years of use is "insufficient to prove acquired distinctiveness, especially without evidence of the extent of such use." "[M]ore evidence would be necessary to show that it has become distinctive of applicant’s goods, e.g., affidavits or declarations from the ultimate purchasers and/or unsolicited publicity and references in the media."

In this case, there is simply no evidence that the alleged mark has ever been promoted by applicant as its trademark in the United States using "Look for ..." promotions, and the record is devoid of evidence that anyone other than applicant regards a beer glass and stand with wording and scrollwork as a trademark for beer sold at restaurants, bars, pubs and the like.

Applicant also feebly pointed to its ownership of a registration for the two-dimensional mark shown below, as a basis for transferred acquired distinctiveness. The Board, however, observed that each case must be decided on its own record, and furthermore that the registered mark "is not the legal equivalent of the three-dimensional beer glass and stand mark."


And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Act on the ground that the applied-for mark fails to function as a trademark.

TTABlog comment: Why wasn't this a product configuration, and thus incapable of being inherently distinctive under Wal-Mart? Because the goods were not beer glasses or steins, but beer.

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/08/2010   0 comments

Tuesday, September 07, 2010

WYHP? TTAB Dismisses 2(d) Cancellation Petition Hinged on "AUGUSTINE'S SPIRITUAL GOODS" Ownership Issue

We've started a new category of TTAB cases: WYHP? Would You Have Petitioned (for cancellation)? In this Section 2(d) attack on a registration for the mark AUGUSTINE'S for "novelty items having a religious theme, namely, incense, perfume oils and scented oils used to produce aromas when heated," the question boiled down to whether Respondent purchased the trademark AUGUSTINE’S SPIRITUAL GOODS from Petitioner via an agreement in 2002. Augustine’s Spiritual Goods, Inc. v. Augustine’s Eternal Gifts, LLC, Cancellation No. 92049453 (August 26, 2010) [not precedential].


Petitioner sold the assets of its business on the South Side of Chicago to Respondent in an agreement that included the following in the list of assets received by the buyer: "The good name of Augustine's Spiritual Goods, which has an 11 year reputation."

Six months later, Petitioner opened a retail store in Hancock, Michigan, under the name AUGUSTINE'S CURIOUS GOODS, while using AUGUSTINE'S SPIRITUAL GOODS on its website.

In order to prevail on its Section 2(d) claim, Petitioner needed to prove priority of use, and it could do so only if it could establish that it still owned rights in the AUGUSTINE'S SPIRITUAL GOODS mark. In short, "[i]f respondent acquired the mark from petitioner, then respondent as the successor company acquired all the rights which the petitioner had in the mark."

Applying Illinois contract law, the Board found "no ambiguity in the terms of the agreement."

For the consideration paid by Carolyn Hennes, she received “[t]he good name of Augustine’s Spiritual Goods, which has an 11 year reputation”; in other words, Hennes acquired the AUGUSTINE’S SPIRITUAL GOODS trademark. There are no restrictions or limitations ascribed to the sale of the name. *** Accordingly, the initial use of the mark AUGUSTINE’S SPIRITUAL GOODS in 1992 by petitioner through the October 17, 2002 sale of the mark to respondent, inures to the benefit of respondent by virtue of the sale of assets between the parties. In other words, the record shows that respondent may claim first use of the mark in 1992 through its predecessor-in-interest, petitioner. The earliest date of first use on which petitioner may rely is when it opened its store in Hancock, Michigan, six months after the sale of the assets.

And so the Board concluded that Petitioner failed to prove a proprietary interest in its mark prior to that of Respondent, and it dismissed the Section 2(d) petition.



TTABlog comment: Thirty-third and Halsted Street is just a stones throw from the new Comiskey Park. The White Sox could use some of that good mojo.


TTABlog postscript: Pam Chestek comments here: "Maybe I would have petitioned:."

Text Copyright John L. Welch 2010.

posted by John L. Welch @ 9/07/2010   4 comments