Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags

There was no need for Playboy Enterprises to pull a rabbit out of a hat to win this cancellation proceeding. The TTAB readily found Respondent's mark BUNNY for various handbag and clothing items likely to cause confusion with Playboy's "Bunny logo" mark for certain clothing items, billfolds, and card cases. The Board also agreed with Playboy that Respondent did not use her mark for all the identified goods, but it declined to invalidate the registration in its entirety on that ground. Playboy Enterprises International, Inc. v. Diane Dickson dba Bunny, Cancellation No. 92047717 (September 21, 2010) [not precedential].


Likelihood of Confusion: The Board focused its analysis on Playboy's common law use of its Bunny logo for headwear, neckwear, and t-shirts, and on two of its registrations for that logo, one for ties and men's shirts and the other for billfolds and card cases. The Board concluded that the parties' goods, trade channels, and classes of purchasers are either the same or closely related.

As to the marks, the evidence showed that "petitioner, the press and the public refer to the logo as a bunny, rather than as a rabbit or some other moniker." Because "a picture and a word that describes the picture often have the same effect and must be treated as legal equivalents," the Board found the involved marks to be equivalent.


With the goods at least closely related and the marks substantially similar, the Board saw no reason to consider any other du Pont factors [not even the fame factor], and it granted the cancellation petition under Section 2(d).

Non-use: Respondent failed to provide, during discovery, evidence that she had used the BUNNY mark on many of her identified goods. The Board concluded that, as of her filing date, she had used the mark only on handbags, tote bags, clutch bags, wallets, and coin purses.

Playboy contended that the application and registration should be considered void ab initio in its entirety. Not so, said the Board. In the absence of fraud, the application and registration are void "only as to the identified goods upon which respondent did not have use as of her filing date," namely, all the class 25 clothing items and a half-dozen bag-type items.

The Board pointed out that this partial cancellation based on non-use will become effective only if Respondent prevails in an appeal from the Section 2(d) ruling.

TTABlog comment: Regarding the available remedies for fraud and non-use see the TTABlog posting here.

Text Copyright John L. Welch 2010.

WYHO? TTAB Finds "GORILLA LOFT" Not Confusingly Similar to "HYLOFT" for Storage Racks and Shelving

Would You Have Opposed? Opposers asserted that Applicant's mark GORILLA LOFT for storage racks and shelving would likely cause confusion with, and would likely dilute, their registered mark HYLOFT for shelving and storage racks and related retail store services. The Board disagreed. What do you think was the decisive du Pont factor? HyLoft, Inc. and KE Investments, Inc. v. Rapid Rack Industries, Inc., Opposition No. 91187636 (October 7, 2010) [not precedential].


The Board first dealt with several evidentiary matters, sustaining an objection to Opposer's rebuttal testimony because it should have been part of their case-in-chief, refusing to consider several declarations submitted by Opposers via notice of reliance, but accepting several late-filed testimony transcripts of Applicant.

Likelihood of confusion: Opposers claimed that their mark is famous for Section 2(d) purposes, but they failed to provide sufficient proof: Opposers submitted evidence of media references, but no evidence as to the circulation of that media and no sales or advertising figures.

As to the marks, Opposers conceded that the word "loft" has meaning for certain storage spaces. Dictionary definitions and Internet evidence established that "loft" is suggestive, if not descriptive, of storage systems. Perceptively observing that the only similarity between the marks is the term "loft," the Board found that use of that suggestive term "alone is not sufficient to support a finding that the marks GORILLA LOFT and HYLOFT are similar." Instead, the Board deemed the marks to be "readily distinguishable."

And so, despite the identity of the goods, the Board ruled that the dissimilarity of the marks outweighed all other du Pont factors and it dismissed the Section 2(d) claim.

Likelihood of dilution: Opposers could not prevail on their dilution claim: they failed to prove fame for purposes of Section 2(d), and perforce could not meet the higher fame standard for dilution.

Moreover, to establish dilution, a party must show that the marks are "identical or very substantially similar." Here the marks are not even similar, and so the dilution claim must fail.

Text Copyright John L. Welch 2010.

Internet Survey Evidence Contributes to TTAB Reversal of Refusal to Register Shape of Walther PPK Handgun

Rarely does a product configuration mark pass TTAB muster [IIRC, the Baldwin key shape was the last one (here); Oops! except for this one], but it just happened in In re Carl Walther GmbH, Serial No. 77096523 (October 26, 2010) [not precedential]. The Board reversed a refusal to register the mark shown below for "firearms; pistols; and air soft guns," finding that Applicant Walther had established acquired distinctiveness for the product design under Section 2(f).


Walther submitted the results of an on-line survey showing that "over half of the survey participants associated PPK handgun design with a single source and approximately one-third of the participants were able to correctly identify the source." The Board cast aside the Examining Attorney's criticisms of the survey, but pointed out that the survey results alone were not conclusive on the issue of acquired distinctiveness.

Additional evidence included a declaration from a handgun expert "knowledgeable about the marketplace for handguns and, in particular, how and why consumers make their purchasing decisions regarding certain handguns." [The Board called this direct evidence of acquired distinctiveness, but it seems indirect to this writer].

Circumstantial evidence included advertising and promotional efforts since 1968, the Board particularly noting that "applicant often presents the PPK handgun with a full pictorial representation and touts the 'sleek, elegant lines have excited shooters from the moment it was created over 75 years ago.'" Walther also benefited from extensive, unsolicited media coverage: the PPK handgun was used as a prop in nearly all of the James Bond films and is frequently referred to as "James Bond’s weapon of choice." The popularity of the gun design is also evidenced by the fact that it is "imitated, under license, through replica products such as air pistols." According to the Board, "[i]t simply stands to reason that a party would only attempt to replicate another party’s trade dress or product configuration, under license or not, if that trade dress or product configuration is perceived by the consumers as distinctive." [What if it's just an attractive design but not a source indicator? -ed.].


And so the Board concluded that Walther "established a prima facie case that the PPK handgun design involved ... has acquired distinctiveness within the meaning of Section 2(f) of the Trademark Act." The Examining Attorney failed to rebut that showing, and so the Board reversed the refusal.

TTABlog comment: The advertising expenditure figures were not impressive, and specific sales figures (other than for replicas) were not provided. Perhaps Walther has one person to thank for this victory: Bond, James Bond. Or maybe two: add the survey expert.

For a recent article on Internet surveys, read Hal Poret, "A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys," 100 Trademark Reporter 756 (May-June 2010). [pdf here].

Text Copyright John L. Welch 2010.

Parties Opt For ACR: TTAB Finds "AETNA ONE" Not Confusingly Similar to "HUMANA ONE" for Health Care-Related Services

Eleven months after the opposition was filed, the parties received their TTAB decision in Humana Inc. v. Aetna Inc., Opposition No. 91192704 (October 13, 2010) [not precedential]. The parties opted for the Board's ACR (Accelerated Case Resolution) procedure, agreed to accelerated discovery, skipped trial, and then proceeded to briefing on the merits, relying on evidence submitted with their briefs. [See Board's Order here].


The Board found Applicant's mark AETNA ONE, in standard character and stylized form, for managed health care services not likely to cause confusion with the registered mark HUMANA ONE & Design for various pre-paid health care insurance and administrative services.

Third-party registration evidence convinced the Board that the involved services are related. Opposer's services "could be directed to or at least be encountered by individuals or companies who are purchasers or users of applicant's managed health care services." However, consumers are likely to exercise some degree of care in choosing health care and related insurance services.

Opposer claimed that its mark is famous and it submitted substantial sales and marketing figures, but it failed to put these numbers in context, for example by evidence of its market share. Therefore, the Board considered this factor to be neutral. Moreover, the Board observed that even if Opposer's mark were famous, the differences in the marks would overcome the fame factor.

Third-party registrations and uses showed that the term ONE "is relatively diluted as used in the health insurance field, and that marks using the word 'One' often co-exist and are distinguished because of other terms used in conjunction with 'One.'" This factor therefore weighed against Opposer.

Finally, as to the marks, the Board not surprisingly found that the terms AETNA and HUMANA are the dominant portions of the respective marks, and that the marks in their entireties differ in appearance, sound, connotation and commercial impression. Moreover the respective design marks differ even more.

In sum, the Board found that the first du Pont factor, the dissimilarity of the marks, "outweighs the evidence as to the other factors which favor opposer's case."

And so the Board dismissed the opposition.

TTABlog comment: I'm getting to like this ACR idea more and more. Limited discovery and evidence by affidavit eliminates a lot of wasteful effort.

Text Copyright John L. Welch 2010.

Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations

The Board reversed a Section 2(d) refusal to register the mark MINDPOWER for botanical extracts for use in the manufacture of various products, including nutraceuticals, finding it not likely to cause confusion with the registered mark MIND POWER RX for "dietary and nutritional supplements." Third-party registration evidence demonstrated that many entities have adopted a single mark for the involved goods, but Applicant successfully argued that the trade channels and classes of customers for the goods do not overlap. In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010) [precedential].


Procedural Issue: The Board first considered the propriety of Applicant's submission of new evidence with its appeal brief. Of course, that is a no-no under Rule 2.142(d), which stated that the record should be complete prior to the filing of an appeal. Applicant argued that it was entitled to submit evidence because the Examining Attorney had submitted evidence as part of her Office action denying a request for reconsideration.

Section 1204 of the TBMP states that the Examining Attorney may submit new evidence directed to the issue for which reconsideration is sought, and "the applicant may not submit additional evidence, even in response to evidence submitted by the examining attorney." [Tip from the TTABlog: Sometimes it's better to appeal immediately rather than seek reconsideration, lest one give the Examining Attorney a chance to shore up a poorly-supported refusal].

Applicant suggested that the Examining Attorney could address the new evidence in her responsive brief, or that the TTAB could remand the case to the Examining Attorney for further consideration. The Board said no, because that would be contrary to normal practice. A request for remand should be filed in a separate paper, and must be supported by a showing of good cause [TBMP Section 1207.02]. Applicant complied with neither requirement. And so the new evidence was not considered.

Substantive Issue: Applicant did not dispute that the involved goods may emanate from a single source under a single mark, but it contended that the differences in the trade channels and classes of customers made confusion unlikely.

What applicant does dispute is the effect of the du Pont factor of the channels of trade and classes of purchasers. Essentially applicant argues that there can be no confusion because the purchasers of dietary and nutritional supplements would never encounter applicant’s goods; that its goods are sold to manufacturers of medicinal, pharmaceutical, herbal and food products, while the registrant’s goods would be sold in such venues as drug stores and health food stores.

Because there are no limitations as to trade channels in the involved application and registration, the goods must be presumed to travel in the normal channels of trade for those goods. But there was nothing in the record to show "that a normal channel of trade for dietary and nutritional supplements is that they are sold to the companies that would purchase applicant's identified goods," i.e., manufacturers of nutraceuticals, pharmaceuticals, etc.

Moreover, Applicant's identification of goods "is sufficient to show that its goods would be sold to manufacturers of pharmaceuticals, nutraceuticals and the like. The buyers of such goods, who would be using these ingredients for the products that they make and sell, must be assumed to be knowledgeable and careful purchasers."

Although we agree with the examining attorney (and applicant) that the registrant’s products can be purchased by ordinary consumers on impulse, because such purchasers would have no knowledge of the applicant’s goods and mark, they would not choose the registrant’s product because they had confused the source of the product with applicant.

And so the Board reversed the refusal.

TTABlog comment: We also know that even sophisticated buyers are not necessarily sophisticated when it comes to trademarks, and that such buyers may be confused when nearly identical marks are involved. The Board chose not to pull that card out of its deck.

Text Copyright John L. Welch 2010.

Current Roster of TTAB Administrative Trademark Judges

The recent selection of Frances S. Wolfson and Angela Lykos as Administrative Trademark Judges at the Trademark Trial and Appeal Board, and the retirement of Paula T. Hairston, brings the number of TTAB Judges to eighteen. Judge Gerard F. Rogers serves as Acting Chief Judge.


Rogers, Gerard F., Acting Chief Judge: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D., magna cum laude, New England School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Dickinson Wright PLLC, Washington, D.C.; Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Bucher, David E.: Appointed to TTAB in 1998; Prior Professional Experience: Trademark Examining Attorney; Senior Examining Attorney; Legislative Assistant, Office of U.S. Senator Paul Simon; Director, Trademark Examining Organization; Deputy Assistant Commissioner for Trademarks; Education: B.A., Eastern Mennonite University; J.D., George Washington University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Grendel, Charles M.: Appointed to TTAB in 1999; Prior Professional Experience: Private Practice in Oregon; Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Stanford University; J.D., University of Oregon School of Law.

Holtzman, Terry E.: Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A. with honors, American University; J.D., George Mason University.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Steptoe & Johnson, Washington, D.C.; Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Lykos, Angela: Appointed to TTAB in 2010; Prior professional experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A. Johns Hopkins University; J.D., Duke University Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Trademark Examining Attorney. Education: B.A., New College, Hofstra University; J.D., American University.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior professional experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Seeherman, Ellen J.: Appointed to TTAB in 1987; Prior Professional Experience: Associate, Fross, Zelnick, Lehrman & Zissu (New York, NY); Trademark Examining Attorney; Staff Assistant, Special Assistant to the Assistant Commissioner for Trademarks; Education: A.B., Brandeis University; J.D., New York University School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Walsh, James: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; USPTO Administrator for Trademark Policy and Procedure; TMEP Editor; Arnold & Porter, Washington, D.C.; Education: B.A., College of the Holy Cross; J.D., Georgetown University.

Walters, Carlisle: Appointed to TTAB in 1996; Prior Professional Experience: Office of Legislative and International Affairs, Trademark Counsel; Administrator for Trademark Legal Policy for Assistant Commissioner for Trademarks; TMEP Editor; Of Counsel, Finnegan, Henderson, Farabow, Garret and Dunner; Education: B.A., Clark University; J.D., New England School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances S.: Appointed to TTAB in 2010; Prior professional experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., University of California - Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Kaye Scholer, New York; Marks & Murase, Washington, D.C.; Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2010.

TTAB Affirms Genericness Refusal of "JOC" For ... Guess What?

Applicant Joe Wiens failed to gain TTAB support in his appeal from a refusal to register, on the Supplemental Register, the term JOC for "protective athletic garments," namely, clothing with built-in cup pouches or protective cups. Examining Attorney Sharon A. Meier maintained that "joc" is the phonetic equivalent of the term "jock," which is generic for the goods. The Board agreed. In re Joel Wiens, Serial No. 78526520 (October 13, 2010) [not precedential].


The Examining Attorney relied on dictionary definitions of "jock," a third-party patent registration [What's that? - ed.], and many third-party web pages showing use of the term "jock" in connection with clothing of the type identified in the involved application.

Wiens conceded that JOC is merely descriptive, but argued that there are "two different definitions for the term 'Jock' in the same context [athlete and athletic supporter]." He contended that the "athlete" connotation is the primary meaning, "especially because applicant's goods are not limited to just jock straps, but rather include female undergarments." [E.g., see photo above - ed.]

In this connection, applicant states that women consumers do not necessarily understand the term “jock” to refer primarily to a jockstrap, and that they primarily associate the term “jock” with an athlete. Applicant points out that his usage of JOC is meant to convey the “athlete” meaning of the term, especially in view of his use of "athletic-looking models" in advertisements.

Wiens and the Examining Attorney agreed that the genus of goods at issue is men's and women's protective athletic garments. The relevant public, the Board found, comprises athletes, "or, more generally, men and women who participate in athletic and/or sporting contests."

The Board recognized that Wiens' goods "do not appear to encompass athletic supporters, per se, but rather goods, such as shorts and pants, that incorporate the qualities and functions of an athletic supporter." However, the evidence showed the term "jock" used with other types of athletic garments: numerous websites offered "jock shorts" and "jock pants." Moreover, the evidence included uses of "jock short" and "jock" in connection with women's athletic garments.

The Board therefore found that "joc" is the "phonetic equivalent and a misspelling of the term 'jock,' and is therefore generic" for shorts and pants that feature protective cups and/or cup pouches." Because Applicant's designation JOC "is used in connection with 'jock'-type athletic garments, this meaning will be the primary meaning, and one that clearly dominates over the meaning of 'jock' as 'an athlete.'"

Given the widespread generic use of “jock” in connection with athletic shorts and pants, the designation “joc,” the phonetic equivalent and misspelled version of “jock,” is incapable of distinguishing applicant’s goods from the same or similar goods of others.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.

Recommended Reading: Anthony Fletcher, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?"

Trademark authority Anthony L. Fletcher provides an entertaining and informative journey through the law of trademark parody over the past 50 years, concluding with his own proposed "Statement of the Law," in his article, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?", 100 Trademark Reporter 1091 (September-October 2010). Or, in his own words: "The intent of this article is to explore how the law got from there to here [From WHERE THERE'S LIFE ... THERE'S BUGS to CHEWY VUITON], to identify and point out some possible missteps, and forgotten right steps, along the way, and, ultimately, to propose a paradigm for analysis of parody trademarks."


Mr. Fletcher observes that the courts employ a "structured analytical framework" for many common trademark issues: lists of likelihood of confusion factors and secondary meaning factors, etc. But not so for trademark parody:

When facing the parody argument or defense, courts have a grab bag of factors and often irreconcilable precedents from which to choose, but no generally accepted methodology for selecting or applying them. There is no accepted structured analysis for deciding what is required to establish trademark parody. There is no shortage of worthy ideas, both pro and anti-parody. But judicial attempts to reconcile and rationalize them have been few, if any.

Mr. Fletcher appends to his article a "Proposed Statement of the Law of Parody," which defines parody, immunizes political parody from legal redress, and provides for judicial relief against non-political parody only when there is a risk of confusion, tarnishment or blurring, or the undermining of the police powers of the State. But you will have to read the entire article to see how he got there.

Mr. Fletcher's comments on trademark law and life over the past half-century are well worth reading. [It isn't often that an article in the Trademark Reporter makes me laugh out loud.]

[This article is Copyright © 2010 the International Trademark Association, and is reprinted with the permission of The Trademark Reporter®, Volume 100 (September-October 2010).]

Text Copyright John L. Welch 2010.

TTAB Sustains Opposition to Registration of Carroll Shelby's "Cobra 427 S/C Vehicle Shape" Due to Lack of Acquired Distinctiveness

In a well-reasoned 49-page decision, the Board sustained an opposition to registration of the shape of Carroll Shelby's Cobra 427 S/C (shown below) for "automobiles," on the ground that the mark lacks acquired distinctiveness. The Board dismissed Opposer Factory Five's claims of genericness and fraud and found it unnecessary to reach the abandonment issue, since Shelby had no trademark right to abandon. Factory Five Racing, Inc. v. Carroll Shelby and Carroll Hall Shelby Trust, Opposition No. 91150346 (October 13, 2010) [not precedential].


Issue Preclusion: The Board began by addressing Opposer 's claim that issue preclusion applies in light of a 2002 decision by the federal courts in Massachusetts that the Shelby design had not acquired distinctiveness. The Board held to its earlier ruling in this case that issue preclusion did apply, but that it would still consider whether subsequent changed circumstances dictated a different conclusion on the issue.

Genericness: Opposer failed to show that the Cobra 427 S/C design has been so widely used by others that it has become generic.

Acquired Distinctiveness: Factory Five had the initial burden to establish a prime facie case that the subject design lacked acquired distinctiveness. Shelby then had the ultimate burden to prove, by a preponderance of the evidence, that his mark has achieved distinctiveness.

Shelby himself testified that use of the design has not been exclusive, since as many as ten companies, including opposer, continued to make Cobra replicas. That was itself enough to establish Opposer's prima facie case.

The Board noted that the "apparent ongoing prevalence of unauthorized third-party sales of Cobra replicas ... has an obvious impact on applicant's ability to show acquired distinctiveness." It raises "serious doubts" about the exclusivity of Shelby's use of the design. However, the evidence of third-party use is not strong enough to be dispositive, but it is a "significant factor."

The Board found Shelby's circumstantial evidence of acquired distinctiveness to be "not impressive." Sales of the Cobra 427 S/C were minimal. Shelby did little or no advertising, although he and his cars were the subject of "constant media attention." However that does not mean that consumers perceive the 427 S/C design as a source indicator for the replicas being sold today. Shelby's policing efforts were "weak:" in fact, as many as ten unauthorized parties continued to produce Cobras in 2009.

Therefore the Board found Shelby's circumstantial evidence of acquired distinctiveness to be insufficient. Shelby's survey evidence consequently became the "crucial piece of evidence."

Unfortunately for Shelby, the Board found the survey evidence to be wanting."His survey expert, Dr. Jacob Jacoby, failed to take into account the marketplace conditions: i.e., that the cars are sold principally in kit form. Therefore the chosen universe "was not reflective of potential purchasers of the Cobra 427 S/Cs which are now on the market." Furthermore, the stimulus that he used, a photograph of a car, depicted a model that differed from the drawing and specimen of the subject application.

A fundamental problem with the survey was the overbreadth of the universe surveyed: it extended well beyond potential purchasers and included "persons with some interest, however limited, in high performance sports cars or custom cars."

The purchaser of a kit ... is a rare creature who is not only knowledgeable about the product but capable of completing or arranging the completion of the product. The significant cost of a kit is further evidence of the care and sophistication which would be typical in such a purchase. This marketplace reality stands in stark contrast to the low level of interest and sophistication required to qualify as a respondent for this survey.

And finally, the questions asked were "not truly probative of the issue, again, because they did not take into account the nature of the goods, principally replicas sold in kit form, and the specialized marketplace for these goods."

In sum, the "numerous and serious flaws" in the survey led the Board to conclude that it had "little or no probative value" concerning the issue at hand.

And so the Board concluded that Shelby failed to show that his use of the design in the current marketplace is substantially exclusive, and he failed to show that the design has acquired distinctiveness.


Fraud: The Board found that Mr. Shelby had a "sincere, good-faith belief that he is the owner of the rights" to the design. Factory Five failed to show any intent to deceive in the filing and prosecution of the subject application, and so the fraud claim failed.

Abandonment: As mentioned, because Shelby failed to establish any rights in the subject design, the issue of abandonment is moot. [How appropriate! the oral argument in this case was held in the moot court room at Boston University School of Law - ed.].

The Board therefore sustained the opposition.

TTABlog comment: It seems fair to say that, although purchasers of the replica kits recognize Carroll Shelby as the original designer of the car, they do not necessarily think that the kits emanate from or are sponsored or approved by Shelby.

Text Copyright John L. Welch 2010.

TTAB Cancels "EQUINE BODY WORKER" Registration For Lack of Acquired Distinctiveness

In a somewhat touching decision, for horses anyway, the Board granted a petition for cancellation of Equinology's Section 2(f) registration for the mark EQUINE BODY WORKER, finding that the mark lacks acquired distinctiveness for the services of "providing courses of instruction and educational testing in the field of equine massage." Registrant managed to fend off Petitioner Equine Touch Foundation's genericness claim, but its affirmative defense of unclean hands came up short. [One would hope that a horse would be massaged with clean hands! - ed.]. The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (September 29, 2010) [not precedential].


Genericness: The Board observed that the term "equine bodywork" is "decidedly generic," but what about EQUINE BODY WORKER, which Respondent apparently coined? Although it might be an "apt" name for a person offering the recited services, the CAFC has stated that "aptness is insufficient to prove genericness." (In re American Fertility Society, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). There was no evidence that the three-word phrase was ever used by the relevant public to refer primarily "to refer to a similar class of services." The Board therefore concluded that Petitioner failed to show that the phrase is generic.

Acquired Distinctiveness: By asserting that its mark has acquired distinctiveness under Section 2(f), Respondent conceded that the mark is merely descriptive. Petitioner had the burden to prove, by a preponderance of the evidence, that the mark has not acquired distinctiveness. Once Petitioner makes a prima facie case, the burden of coming forward with evidence to overcome that case rests with Respondent.

Equinology has used of its "highly descriptive" mark since 1997, a "fairly lengthy period." More than 1,000 people have taken its course of instruction, and more than 500 have been certified as "Equine Body Workers." However, Respondent did not provide information as to its relative success in its field, nor information as to its market share. The sales figures, standing alone, are "not so impressive as to elevate respondent's designation to the status of a distinctive mark." Its advertising expenditures, almost $200k in 14 years, are "a moderate sum" and are not necessarily all attributable to the "Equine Body Worker"certification course. Dueling declarations submitted by the parties cancelled each other out. Media coverage has been minimal.

On the other hand, attempts by third-parties to use the phrase have been few: Equinology has issued two cease-and-desist letters. "[W]hat is more surprising ... is that respondent has not located more persons in the field of horse care and massage who had inadvertently used this highly descriptive designation."

The Board therefore concluded that Respondent failed to overcome Petitioner's prima facie case that the term EQUINE BODY WORKER has not acquired distinctiveness.

Unclean Hands: Respondent claimed that Petitioner's hands were unclean because it modified its website in 2005 and 209 to include the terms "bodywork" and "equine bodywork." However, as the Board pointed out, "equine bodywork" is a generic term and is not Respondent's mark. And so Petitioner's hands were clean.


TTABlog comment: Is the equitable defense of unclean hands available against a claim of mere descriptiveness? See The Loglan Institute Inc. v. The Logical Language Group Inc., 22 USPQ2d 1531 (Fed. Cir. 1992); Consolidated Foods Corp. v. Big Red, Inc., 226 USPQ 829 (TTAB 1985).

Text Copyright John L. Welch 2010.

Pamela Chestek Explains the TTAB's Recent "NITELIFE" Ownership Decision

Because the TTAB's recent Nitelife decision was too complicated for my aging brain, I asked i.p. ownership guru Pamela Chestek to explain it. She did so here at her Property, Intangible blog. Nitelife of Santa Barbara v Nite Life Car Club Ass'n, Opp. No. 91188462 (T.T.A.B. Sept. 30, 2010).

TTAB Judge Paula T. Hairston Retires

A reliable source tells me that Administrative Trademark Judge Paula T. Hairston retired as of October 15, 2010. Judge Hairston was appointed to the TTAB in 1994. [A complete roster of the remaining eighteen TTAB judges may be found here.]

"INVENT! INVENT! INVENT! PATENT IT! Confusingly Similar to "PATENT IT!," Says TTAB

Palmer Patent Consultants perhaps needed a trademark consultant in connection with its attempt to register the mark INVENT! INVENT! INVENT! PATENT IT! for "intellectual property consultation" [PATENT disclaimed]. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with the registered mark PATENT IT! for "legal services." In re Palmer Patent Consultants, LLC, Serial No. 76673151 (October 7, 2010).

What's the invention here?
The Board began by determining that the services of the parties are identical, since "[i]ntellectual property is a field of law and consultation in this field includes the rendering of legal services." The channels of trade are therefore presumed to be identical.

Applicant urged that the purchasers of the services are sophisticated, but the Board pointed out that this class of consumers is likely to included not only scientists and engineers but also artists and individuals. In short, there was no evidence that this "broad class of purchasers is sophisticated or knowledgeable about trademarks or source confusion."

As to the marks, Examining Attorney Raul Cordova argued that Applicant's slogan culminates with the command PATENT IT! and that this command "will make the greatest impression on the purchaser." He recognized that PATENT is merely descriptive, but urged that INVENT! is at least highly suggestive and that the repetition of the phrase does not create an impression distinct from the single word INVENT!

Applicant maintained that INVENT! INVENT! INVENT! is dominant, that PATENT is at least merely descriptive, and that its mark is "in the nature of a pep rally slogan." [I understand that this very cheer is heard at MIT pep rallies! - ed.].

The Board found no evidence in the record that the cited mark is weak, nor had it been shown that PATENT IT! is merely descriptive in connection with Respondent's services. [Isn't it obvious? - ed] . It found the marks to be similar in their entireties:

Because inventions are the subject of patents, the phrase INVENT! is conceptually related to the phrase PATENT IT! and suggests to inventors that they obtain patents. The mere repetition of the phrase three times does not change this connotation. Neither does the fact that the one-word exclamatory phrase INVENT is followed by an exclamation point change the connotation. Rather, in addition to containing the phrase PATENT IT!, which is identical to the registered mark, the exclamatory nature of the repetitive word INVENT! repeats the exclamatory nature of the phrase PATENT IT! and increases its visual similarity to the registered mark. We view the mark as a unitary whole wherein no one term is dominant.

And so the Board affirmed the refusal.

TTABlog comment: I'm not buying the Board's reasoning. If the Applicant's mark is seen as a "unitary whole," then I think it is quite different from the cited mark. And how exactly does the repetition of INVENT! increase the mark's visual similarity to the registered mark?

Text Copyright John L. Welch.

USPTO Seeks Comments on Trademark Bullies You Have Known

The U.S. Patent and Trademark Office is requesting comments (here) on the following topic: "the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner." Please send your comments by January 7, 2011 to TMFeedback@uspto.gov.


The PTO is looking for "feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics, especially those involving an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. The USPTO also is eliciting suggestions to address any allegedly problematic litigation tactics." It requests that commenters address the following points:

1. Please identify whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles. Please note that the USPTO will fully consider any comments you submit, even if you choose not to identify yourself in a particular manner.

2. In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.

3. Please describe situations where you have been involved in receiving a cease-and-desist letter. Anecdotal information might include, but is not limited to, a description of whether the letter resulted in the small business ceasing its use of one or more marks, or whether the sender of the cease-and-desist letter withdrew or abandoned its demands against the small business owner.

4. Please describe situations where you have been involved in trademark litigation in state or federal courts. Anecdotal information might include, but is not limited to, a description of whether the lawsuit settled on the basis of the small business agreeing to cease its use of one or more marks, or on the basis of the plaintiff withdrawing or abandoning its trademark-related allegation(s). Alternatively, relevant information might include whether such lawsuits resulted in a court judgment and the nature of the judgment (such as requiring the small business to cease its use of one or more marks, assessing monetary liability (damages, lost profits, or attorneys’ fees) against the small business, requiring the plaintiff to pay the defendant’s attorneys’ fees, or imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure).

5. Please describe situations where you have been involved in opposition/cancellation proceedings instituted at the USPTO against small business owners. Anecdotal information might include, but is not limited to, a description of whether the proceedings settled on the basis of the small business agreeing to abandon its application(s) for one or more marks, or whether the proceedings settled on the basis of the plaintiff withdrawing or abandoning its notice of opposition or cancellation petition. Alternatively, relevant information might include a description of whether such proceedings resulted in a decision by the USPTO Trademark Trial and Appeal Board (“TTAB”) refusing to register/canceling one or more marks owned by the small business, or whether such proceedings resulted in the TTAB imposing sanctions against the plaintiff under Rule 11 of the Federal Rules of Civil Procedure.

6. Do you think trademark “bullies”[1] are currently a problem for trademark owners, and if so, how significant is the problem?

7. Do you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

8. Do you think the USPTO has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should the USPTO do?

9. Do you think the U.S. courts have a responsibility to do something to discourage trademark bullies? If yes, what should the U.S. courts do?

10. What other U.S. agencies may have a responsibility to do something about the problem?

11. Do you think Congress has a responsibility to do something to discourage or prevent trademark bullying? If yes, what should Congress do?

12. Please provide any other comments you may have.

According to the USPTO, "A trademark “bully” could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow."

TTABlog comment: Individuals can be trademark bullies too! I know of one who terrorized the trademark landscape until a few years ago. Or was he merely a trademark troll?

Please list your "favorite" trademark bullies in your comment to this posting (I suggest anonymously).

Text Copyright John L. Welch 2010

Precedential No. 39: TTAB Re-Designates "ONCE A MARINE ..." Decision as Precedential

On September 3, 2010, the Board re-designated its decision in In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) as precedential. The original TTABlog posting may be found here. The Board held that the phrase ONCE A MARINE, ALWAYS A MARINE would be perceived merely as informational and does not function as a trademark for Applicant's clothing items


Text Copyright John L. Welch 2010.

"AGAVERITA" Merely Descriptive of Non-Alcoholic Cocktail Mixes, Says TTAB

The Board sustained this Section 2(e)(1) opposition to registration of the mark AGAVERITA in stylized form, finding it merely descriptive of "nonalcoholic cocktail mixes." Tequila Cuervo La Rojena S.A. de C.V. v. David Kent Axtell, Opposition No. 91188596 (September 30, 2010) [not precedential].


The Board began by noting that Applicant's goods, as identified, are broad enough to include (and admittedly do include) mixes used to make margaritas, which are tequila-based cocktails. The evidence showed that "rita" is a common shorthand name for a margarita and in fact appears as a suffix in several registered marks for margarita beverages. Moreover, "agave" is a form of tequila or the type of plant from which tequila is derived. The Board therefore found that "the combined term AGAVERITA describes a margarita cocktail made with an agave form of tequila."

Because AGAVERITA is descriptive of the cocktail, it is merely descriptive of the purpose or function of applicant's mixes used to make the cocktail, that is, an agave-based margarita cocktail.

The Board further found that the particular stylization or display of the mark was not so distinctive as to make the mark registrable even with a disclaimer of the descriptive words.

And so the Board sustained the opposition.

TTABlog note: This is one of those times when, half way through the posting, I wish I had picked another case.

Copyright John L. Welch 2010.

Edge Games Crashes in Trademark Suit Against Electronic Arts

For several years, Edge Games has been claiming broad rights in the word "EDGE" in connection with video games, but its aggressiveness took it right over the edge when it sued Electronic Arts for trademark infringement, claiming that EA's use of the mark "MIRROR'S EDGE" for video games infringed its rights. The U.S. District Court for the Northern District of California soundly denied Edge's motion for a preliminary injunction, finding that all of Edge's "representations regarding the validity and use of the asserted marks are infected by evidence of deceit." Edge Games, Inc. v. Electronics Art, Inc., Civil Action No. c10-02614 WHA (N.D. Cal. October 1, 2010).


Electronic Arts launched a "no-holds-barred attack on the validity of each of plaintiff's pleaded marks and the credibility of Dr. Langdell's sworn representations made to both the USPTO and the Court." EA alleged that Dr. Langdell and Edge committed fraud on the USPTO by submitting false/doctored specimens of use and making false representations regarding use of its marks. The Board observed that, "given the suspect nature of Dr. Langdell's representations to both the USPTO and the Court ... it is an open question whether plaintiff’s business activities legitimately extend beyond trolling various gaming-related industries for licensing opportunities."

The Court concluded that Edge had "failed to establish that it is likely to succeed on the merits, that it is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in its favor, or that an injunction is in the public interest."

The parties promptly settled this case, and on October 10, 2010, the Court entered a Final Judgment (here) and an Order approving the parties' stipulation regarding the disposition of the claims (here). In the Judgment, the Court ordered the USPTO to cancel five registrations owned by Edge. The Order required Edge to notify its licenses that the marks [sic] have been cancelled, and to provide them with a copy of the order denying Edge's motion for preliminary injunction.

Text Copyright John L. Welch 2010.

Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine

The parties opted for the Board's Accelerated Case Resolution (ACR) process in this Section 2(d) opposition to the mark FREDERICK WILLIAM for various types of wine. Opposer Frederick Wildman claimed likely confusion with its registered logo mark shown below, for "wines." Applicant, appearing pro se, conceded priority and similarity of goods, but the Board agreed with him that the marks are so different as to warrant dismissal of the opposition. Frederick Wildman & Sons, Limited v. Frederick William Scherrer, Opposition No. 91191369 (September 30, 2010) [not precedential].


The Board applauded the parties for choosing ACR, "as this appears to be an ideal set of facts for the selection of the streamlined process." The parties agreed to ACR at the discovery conference of October 5, 2009, had a bit of discovery, skipped testimony and notices of reliance, submitted their evidence as attachments to their briefs filed in March and April 2010, skipped oral argument, and received their decision in September 2010.

Applicant contended that Opposer is an importer and distributor of branded wines, which are marked with Opposer's "oval of quality" mark, whereas Applicant is an blender/producer who will use his mark in the name of the wine. This, however, "is a marketplace distinction without a legal difference." The respective identification of goods are legally equivalent.

Opposer's mark has been in use for decades, and sales of its products bearing the mark exceed one million cases per year. However, Opposer did not provide information as to household penetration or market share, or information to show that it has achieved "strong brand awareness and national recognition that would entitle it to be considered a famous mark."

As to the marks, Opposer contended that the design portion of its marks is of little significance and that the word portion is nearly identical to Applicant's mark. The Board, however, found that "Wildman" and "William" have very different sounds, connotations, and commercial impressions."

"Wildman" in this context appears to be a surname (i.e., preceded by a given name and followed by the phrase "and Sons"). By contrast, the name "William," when used with the name "Frederick," sounds like the joining of two given names, as indeed, appears to be the case for applicant. In fact, we find these two marks are so different that the du Pont factor of the dissimilarities of the marks outweighs the other relevant du Pont factors ....

The Board therefore concluded that Opposer had failed to prove its Section 2(d) case, and it dismissed the opposition.

TTABlog note: For all the information you need about ACR, go to the TTAB home page (here).

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability on this Trademark Mutilation Case

Do you know trademark mutilation when you see it? Applicant AHL, Inc. applied to register the mark HOME STATE for firearms; its specimen of use showing the mark as applied to the goods appears immediately below. The question is this: under Rule 2.51(b), is the mark of the drawing, (i.e. the words HOME STATE) a substantially exact representation of the mark as used on or in connection with the goods? What say you? In re AHL, Inc., Serial No. 77741878 (September 30, 2010) [not precedential].



Of course an Applicant may seek to register any portion of a composite mark, provided the particular portion creates a separate and distinct commercial impression. But if it does not, "the result is an impermissible mutilation of the mark as used."

The Board agreed with Examining Attorney Christopher L. Buongiorno that the term HOME STATE does not create a separate and distinct commercial impression.

Visually, all of the words are displayed on the same line and in the same font style, with the first letter in each word presented in upper case letters and the remaining letters of each word in smaller upper case letters. In addition, the only physical separation between the words HOME STATE and the word TRIBUTE is the [erroneous - ed.] placement of the registration symbol after the word STATE. Given its much smaller-sized lettering, it is unlikely to be noticed and, even if it is, it fails to conceptually separate the wording.

The Board did not believe that consumers will perceive the words HOME STATE and the word TRIBUTE as conceptually distinct.

Given the syntax and structure of the phrase HOME STATE TRIBUTE,it is clear that the word “TRIBUTE” is modified by the words HOME STATE and that the commercial impression rendered by the wording HOME STATE TRIBUTE is not severable. This perception is bolstered by the specimen, wherein the additional text on the specimen states: "Presenting ... Your HOME STATE TRIBUTE .45," "The American Historical Foundation’s First Colt® .45 in Honor of Your Home State!" (emphasis supplied)

And so the Board affirmed the refusal to register.

TTABlog comment: That wasn't so hard was it? Compare this case with the CYCLOSSORB decision (TTABlogged here). If the specimen here had said "HOME STATE .45," would HOME STATE be deemed to create a separate and distinct impression?

Text Copyright John L. Welch 2010.

The IP Book 2010 Available at 10% Discount

TTABlog Readers interested in purchasing the 2010 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education, may do so here (either in book form or CD-Rom). For a 10% discount, enter this code when prompted: 2010IPBook.



Table of Contents:

• CHAPTER 1. Federal Circuit Year in Review –The Court Shifts Gears
• CHAPTER 2. Bilski
• CHAPTER 3. Design Protection Update:Issues Relating to Design Protection After Egyptian Goddess
• CHAPTER 4. Developments in the Law of Patent Remedies
• CHAPTER 5. Update on the Written Description Requirement after Ariad
• CHAPTER 6. False Patent Marking Claims after Forest Group v. Bon Tool
• CHAPTER 7. Copyright Year in Review
• CHAPTER 8. Google, Fairness and the Battle of the Books
• CHAPTER 9. Trade Secret Year in Review
• CHAPTER 10. Top Ten Trademark Decisions of 2009–2010
• CHAPTER 11. Keyword Advertising
• CHAPTER 12. Top Ten TTAB Decisions of 2009–2010
• CHAPTER 13. Top Ten UDRP Decisions of 2009–2010

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Follow the TTABlog on Twitter !

By following the TTABlog on Twitter (here), you'll receive not only the blog postings but additional tweets and re-tweets that may be of interest (at least to me).

Mark Your TTAB Calendar: Webinar on Fraud, November 10, 2010

Two trademark experts, Steve Baird and Joe Dreitler, along with yours truly, will conduct a webinar on November 10, 2010 (1:00 - 2:30PM EST), entitled: "Trademark Fraud on the USPTO - Meeting the Challenges of Pleading and Proving Fraud After Bose." Full details and registration here.

In the year since the Federal Circuit Court of Appeals handed down its standard changing decision in In re Bose, the Trademark Trial and Appeal Board (TTAB) has issued rulings that provide some guidance for counsel on how to plead and prove fraud.

While the Bose decision dramatically changed the landscape for pleading and proving trademark fraud, clearly rejecting the TTAB’s prior Medinol “knew or should have known” standard, and now requiring a subjective intent to deceive the USPTO, it left many unanswered questions over which to grapple.

Recent TTAB rulings shed some light on these questions. Counsel must understand how the TTAB and the district courts are now addressing fraud to be able to meet the increased challenges of pleading and proving fraud and the related claims of void ab initio and no bona fide intent.

Updated 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 updated his casebook entitled ""Fundamentals of Intellectual Property Law." [Free download here]. This is the Fall 2010 version, which is approximately the 21st revision. "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."

TTABlogger Article: The Top Ten TTAB Decisions of 2009-2010

Here is a link to my chapter in the 2010 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education: "The Top Ten TTAB Decisions of 2009-2010." The IP Book provides a collection of updates on case law and emerging issues in all major areas of intellectual property law.[ I thank Steve Baird for the opportunity to contribute again to this useful reference.]



Here is the Table of Contents for this, the 8th Edition:

• CHAPTER 1. Federal Circuit Year in Review –The Court Shifts Gears
• CHAPTER 2. Bilski
• CHAPTER 3. Design Protection Update:Issues Relating to Design Protection After Egyptian Goddess
• CHAPTER 4. Developments in the Law of Patent Remedies
• CHAPTER 5. Update on the Written Description Requirement after Ariad
• CHAPTER 6. False Patent Marking Claims after Forest Group v. Bon Tool
• CHAPTER 7. Copyright Year in Review
• CHAPTER 8. Google, Fairness and the Battle of the Books
• CHAPTER 9. Trade Secret Year in Review
• CHAPTER 10. Top Ten Trademark Decisions of 2009–2010
• CHAPTER 11. Keyword Advertising
• CHAPTER 12. Top Ten TTAB Decisions of 2009–2010
• CHAPTER 13. Top Ten UDRP Decisions of 2009–2010

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WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services

No matter how you slice it, Applicant Viccino's was in deep-dish trouble when it appealed from a Section 2(d) refusal to register its logo mark shown below for "delivery of food by restaurants" and "carry-out restaurants." The Board affirmed, finding the mark likely to cause confusion with the registered mark IL VICINO for restaurants. In re Viccino's Pizza Restaurants, Inc., Serial No. 77472394 (September 30, 2010) [not precedential].


As to the services, Applicant's carry-out restaurants were encompassed by Registrant's recitation of "restaurants." As to Applicant's delivery services, nearly two dozen third-party use-based registration were submitted by Examining Attorney Brian P. Callaghan to show that delivery services and restaurant services are of a kind that "could be marketed by a single source under a single mark." Moreover the trade channels and the classes of consumers overlap, and consumers would exercise only ordinary care in their purchasing decisions.

As to the marks, the Board not surprisingly found that the word VICCINO'S dominates Applicant's mark. The pizza design element "certainly contributes to the visual impression of the mark," but it is "highly suggestive because it informs purchasers that applicant's carry-out restaurants feature pizza as a menu item."

The word VICINO dominates the cited mark, since consumers "are likely to perceive and recall (if they recall at all)" the word IL "as merely an introduction to the longer and more prominent word VICINO."

The points of visual dissimilarity are "counter-balanced by the basic visual similarity of the marks" arising from "the presence at the heart of the marks of the same letters in the same order, i.e., VIC followed by INO."

In terms of sound, the marks are "highly similar," and neither mark "has a straightforward connotation or meaning which purchasers might use to distinguish the marks." As for commercial impression, each mark suggests an Italian restaurant either named after a person named VICCINO or having an "Italian-looking" name IL VICINO.

Comparing the marks as a whole, the Board found them to be similar "due primarily to the similarity in the way the marks sound." The sound of the marks is particularly significant here because restaurant services are often recommended by word-of-mouth.

And so the Board affirmed the refusal to register.


TTABlog comment: Do you think there was a snowball's chance in a brick oven that this refusal could be overturned on appeal?

How about arguing that VICCINO'S looks like someone's name, while IL VICINO has the meaning of "in the vicinity of Illinois" or "near Illinois?"

Text Copyright John L. Welch 2010.

CAFC Affirms TTAB: Chippendales' "Cuffs & Collar" Mark Not Inherently Distinctive

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision [TTABlogged here] holding that Chippendales' "Cuff & Collar" costume mark is not inherently distinctive for "adult entertainment services, namely exotic dancing for women." Applying the Seabrook test for product packaging, the CAFC agreed with the Board that the Chippendales' mark is a mere variant or refinement of the "pervasive Playboy mark, which includes the cuffs and collar together with bunny ears." In re Chippendales USA, Inc., 96 USPQ 2d 1681 (Fed. Cir. 2010) [precedential]. [Oral argument TTABlogged here].


Slightly modified version
Mootness?: The court first considered whether the fact that Chippendales already has a Section 2(f) registration for this mark renders the question moot. Chippendales urged that a registration issued without a Section 2(f) showing is a stronger and more readily enforceable registration. The court agreed, observing that, although Chippendales' particular situation is unlikely to arise again, "there are potential collateral consequences resulting from the form of registration under the Lanham Act and that this presents a viable controversy."

When to Measure Distinctiveness?: Chippendales argued that the determination of inherent distinctiveness should be made a the time the mark is first used, while the PTO asserted that it should be measured at the time of registration. The court agreed with the PTO:

It would be unfair for an applicant to delay an application for registration and then benefit from having distinctiveness measured at the time of first use. This would allow an applicant to preempt intervening uses that might have relied on the fact that the registration for the mark as inherently distinctive had not been sought at an earlier time.

Inherently Distinctive?: The CAFC ruled that the Board erred in suggesting that any costume in the context of the adult entertainment industry would lack inherent distinctiveness, but the Board was correct in its ultimate conclusion: under the third Seabrook factor, the Cuffs & Collar mark constitutes "a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods."

That test is satisfied if the Cuffs & Collar mark is a mere variant or refinement of a particular costume. The Board found that the Cuffs & Collar mark was not inherently distinctive "because of the existence of the pervasive Playboy mark, which includes the cuffs and collars together with bunny ears."

Chippendales lamely argued that there are separate markets for male adult entertainment and female adult entertainment, and therefore the Playboy bunny suit is not relevant. The court, however, saw no reason to disturb the TTAB's finding that the relevant market was "adult entertainment," not adult entertainment specifically for women.

Finally, Chippendales quixotically offered its own "better test" for inherent distinctiveness, maintaining that the Supreme Court's decision in Wal-Mart is add odds with Seabrook and that the court should overrule Seabrook. The court, however, pointed out that the Supreme Court expressed no disagreement with Seabrook, although rejecting it as a test for product configuration marks. In any event, the CAFC panel "is bound by Seabrook, and only the court en banc may overturn it."

And so the court affirmed the Board's decision.

TTABlog note: Will Chippendales seek an en banc review? Will it petition for certiorari? I'll bet the latter.

BTW: I was fortunate enough to argue the Wiley v. American Greetings red-heart-on-a-teddy-bear case at the First Circuit. My second son was born the day before the argument, and so we named him Teddy. [Actually we named him Jack, but why let the facts get in the way of a bad story?]

Text Copyright John L. Welch 2010.

Place Your Bets: TTAB Posts October 2010 Hearing Schedule

Any predictions on the six (6) TTAB hearings scheduled for the month of October (listed below)? The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


October 12, 2010 - 11 AM: Bose Corporation v. Tofasco of America, Inc, Opposition No. 91176670 [Section 2(d) opposition to LIFE STYLING for "portable and handheld digital electronic devices" in view of the registered mark LIFESTYLE for "loudspeaker systems; music systems consisting of a loudspeaker system and power amplifier and at least one of a CD player, tape player and radio tuner; home theatre systems; home entertainment systems; digital circuitry for the afore-mentioned products; and custom design and installation of the afore-mentioned products"].


October 13, 2010 - 2 PM: Liberty Bell Equipment Corp. v. Graco Minnesota Inc., Opposition No. 91177965 [Section 2(d) opposition to FINISHPRO for paint sprayers in view of the registered mark FINISH PRO for paint and paint-related products for automobile, marine, and industrial use].


October 21, 2010 - 2 PM: Nestle Prepared Foods Company v.V&V Enterprises Incorporated , Opposition No. 91167465 [Opposition to registration of PF POCKET FOODS CORPORATION & Design for pocket sandwiches [POCKET FOODS CORPORATION disclaimed], on the grounds of abandonment and likelihood of confusion with the registered marks HOT POCKETS and LEAN POCKETS for ready-to-each frozen bread with fruit, meat, cheese, and/or vegetable filling].


October 26, 2010 - 2 PM: Magno-Humphries, Inc. v. Bluebonnet Nutrition Corp., Opposition Nos. 91178358 and 91179048 [Consolidated Section 2(d) oppositions to registration of OPTIMUM ENZYMES and OPTIMUM C-1000MG for nutritional supplements, in view of the registered mark OPTIMUM for vitamins and supplements].


October 27, 2010 - 10 AM: In re Eddie Bauer, Inc., Serial No. 77411442 [Section 2(d) refusal to register the mark YUKON CLASSIC for backpacks and clothing [CLASSIC disclaimed] in light of the registered mark YUKON for footwear, backpacks, and clothing].


October 28, 2010 - 10:30 AM: In re Staples The Office Superstore LLC, Serial No. 78411419 [Section 2(d) refusal to register ONE^.TOUCH for "non-electric staplers and hole punchers," on the ground of likelihood of confusion with the registered mark ONE-TOUCH for ring binders].


Text Copyright John L. Welch 2010.