TTABlog Podcast: Trademark Fraud – The Impact of In re Bose on Trademark Owners, Practitioners, and the USPTO

My colleague and friend, Peter Lando, invited me as a guest on his Legal Talk Network program called IP Counsel, to discuss the Bose decision and some of its ramifications. [One thing we proved is that I have a voice for blogging.] Anyway, the podcast may be found here. Happy New Year!

TTABlog Quarterly Index: October - December 2010

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.


Section 2(a) - false association:

• Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition

Section 2(a) - scandalous:

• TTAB Reverses 2(a) Scandalousness Refusal of "BIG EFFIN GARAGE" for Music Website
• Test Your TTAB Judge-Ability: Is "AUDIOTURD & Design" Scandalous Under Section 2(a)?

Section 2(c) - lack of consent from living individual:

• Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"

Section 2(d) - likelihood of confusion:

• Baja Humbug? Affirming 2(d) Refusal, TTAB Finds Confusion Likely Between "BAJA" for Camping Trailers and Automobiles
• Test Your TTAB Judge-Ability: Are "CORVOLTTE" and "CORVETTE" Confusingly Similar for Automobiles?
• Test Your TTAB Judge-Ability: Are "B.C. PIZZA" and "B&C PIZZA" Confusingly Similar?
• Applicant's Bad Faith a Factor in TTAB's Sustaining "AFROS TO SHELLTOES" 2(d) Opposition
• Test Your TTAB Judge-Ability: Why Are "ECSTA LX PLATINUM" and "PLATINUM" Not Confusingly Similar for Tires?
• TTAB Finds "LAGUNA" Logo on T-Shirt Merely Ornamental, Affirms Refusal
• Test Your TTAB Judge-Ability: Are "ISLAND TROPICAL" and "TROPICAL ISLAND BLAST" Confusingly Similar For Fruit-Based Snack Food?
• Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags
• WYHO? TTAB Finds "GORILLA LOFT" Not Confusingly Similar to "HYLOFT" for Storage Racks and Shelving
• Parties Opt For ACR: TTAB Finds "AETNA ONE" Not Confusingly Similar to "HUMANA ONE" for Health Care-Related Services
• Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations
• "INVENT! INVENT! INVENT! PATENT IT! Confusingly Similar to "PATENT IT!," Says TTAB
• Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine
• WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services

Section 2(e)(1) - mere descriptiveness:

• TTAB Affirms Refusal of "MTS TESTSUITE" - Applicant Failed to Comply with Disclaimer Requirement
• "AGAVERITA" Merely Descriptive of Non-Alcoholic Cocktail Mixes, Says TTAB

Section 2(e)(2) - primarily geographically descriptive:

• TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)

Section 2(e)(4) - primarily merely a surname:

• Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"

Section 2(f) - acquired distinctiveness:

• TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)
• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive
• Internet Survey Evidence Contributes to TTAB Reversal of Refusal to Register Shape of Walther PPK Handgun
• TTAB Sustains Opposition to Registration of Carroll Shelby's "Cobra 427 S/C Vehicle Shape" Due to Lack of Acquired Distinctiveness
• TTAB Cancels "EQUINE BODY WORKER" Registration For Lack of Acquired Distinctiveness

Abandonment:

• TTAB Says Nevermind to Abandonment Claim in "NIRVANA" Bottled Water Cancellation

Failure to Function

• TTAB Reverses Refusal to Register Weldebrau Beer Bottle Design, Finding it Inherently Distinctive
• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive

Fraud:

• Fraud? TTAB Denies Another Summary Judgment Motion as Defendant Claims Innocence, Non-Falsity
• Frivolous Fraud Claims: A Suggested Sanction

Genericness:

• Precedential No. 45: TTAB Finds "NANDRIVE" Generic for Electronic Integrated Circuits
• "FIRSTAIDE" Generic for Bandages and Kits, Says TTAB, Affirmingly
• Precedential No. 43: TTAB Reverses Genericness Refusal of "THUMBDRIVE" for Portable Storage Devices
• TTAB Affirms Genericness Refusal of "JOC" For ... Guess What?

Lack of bona fide intent:

• Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition

Non-use:

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

Ownership:

• Pamela Chestek, IP Ownership Guru, on Koolatron and Wella
• Pamela Chestek Explains the TTAB's Recent "NITELIFE" Ownership Decision

Procedural issues:

• Precedential No. 47: TTAB Dismisses Opposition for Lack of Standing, Finds No Excusable Neglect Warranting Re-Opening of Case
• Precedential No. 41: Parties File Cross-Motions for Summary Judgment, then Opt for TTAB's ACR Procedure to Resolve Cancellation

Use in Commerce/Drawing/Specimen of Use:

• Test Your TTAB Judge-Ability on these Two Service Mark Specimens of Use
• Test Your TTAB Judge-Ability on this Specimen of Use for Health-Care Administration Services
• Test Your TTAB Judge-Ability on this Trademark Mutilation Case

CAFC Decisions:

• CAFC Affirms TTAB's Decision in "ANTHONY'S" Pizza 2(d) Brouhaha
• CAFC Affirms TTAB: Chippendales' "Cuffs & Collar" Mark Not Inherently Distinctive

Recommended Reading:

• Recommended Reading: Anthony Fletcher, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?"
• TTABlogger Article: The Top Ten TTAB Decisions of 2009-2010

Other:

• TTABlog Podcast: Trademark Fraud – The Impact of In re Bose on Trademark Owners, Practitioners, and the USPTO
• INTA's TM Topics Email List: If It Ain't Broke, Don't Fix It
• PTO Announces Change to TEAS e-Signature Approach
• Subscribe to USPTO E-mail News Updates
• Transcript of September 2, 2010 TPAC Meeting Now Available
• TTAB Posts December 2010 Hearing Schedule
• TTABlog Named to ABA Journal Blawg 100
• USPTO Webcast: "Roundtable on Best Practices for Trademark Prosecution in the Current Electronic Environment"
• Erik Pelton's Summary of This Week's TPAC Public Meeting
• TTAB Hot Stove League: Five MLB Teams Oppose the Mark "B." for Children's Books
• USPTO Issues Performance and Accountability Report for Fiscal Year 2010
• More TTABlog Tweets and Re-Tweets
• TTAB Bully Watch: What About NFL's Challenging "SOUPER BOWLS SOUPS SALADS SANDWICH WRAPS?"
• Check Out Towergate Software's New "2(d) Citation Watch" Service
• Commissioner for Trademarks Lynne Beresford to Retire on December 30
• Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies
• Recent TTABlog Tweets and Re-Tweets
• TTAB Bully Watch: Major League Baseball Opposes Design Mark Comprising a Head Wearing a Reversed Baseball Cap
• TTABlog Reaches Sixth Anniverary
• Trademark Bullying: Birth of a TTAB Affirmative Defense?
• TTAB Hot Stove League Opener: LA Dodgers Oppose BROOKLYN BURGER logo
• TTAB Posts November 2010 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges
• TTAB Judge Paula T. Hairston Retires
• USPTO Seeks Comments on Trademark Bullies You Have Known
• Edge Games Crashes in Trademark Suit Against Electronic Arts
• Mark Your TTAB Calendar: Webinar on Fraud, November 10, 2010
• Updated Case Book: "Fundamentals of Intellectual Property Law" by Prof. Thomas G. Field, Jr.
• Place Your Bets: TTAB Posts October 2010 Hearing Schedule

Text and photos ©John L. Welch 2010.

TTAB Reverses Refusal to Register Weldebrau Beer Bottle Design, Finding it Inherently Distinctive

Applying the CCPA's Seabrook test for product packaging, the Board reversed a refusal to register the bottle design shown below as a trademark for beers and other beverages, finding the design to be inherently distinctive. It ruled that the design is not a "common" basic shape, that it is "unique and unusual" in its field, that it is not a mere refinement of commonly-adopted trade dress, and that consumers would perceive and rely on the bottle design as an indicator of source. In re Weldebräu GmbH & Co. KG, Serial No. 79056290 (December 13, 2010) [not precedential].


The subject application was filed under Section 66(a) without any allegation of use. The Examining Attorney maintained that the design is "nondistinctive trade dress that does not function as a trademark pursuant to Section 1, 2, and 45 of the Trademark Act."

Both the Examining Attorney and Applicant Weldebrau submitted third-party registrations showing various bottle designs, some on the Principal Register, with and without acquired distinctiveness, and some on the Supplemental Register. The Board, of course, noted that these registrations "are not particularly persuasive because the registrability of each mark must be decided on its own merits." Since both Applicant and the Examining Attorney submitted about the same number of registrations, the Board could discern no particular PTO practice in registering bottle designs.

The Board found that "a central and prominent feature of applicant's bottle design is the spiral neck." One commentator likened applicant's bottle design to 'the shape of a curvy woman.'" [Perhaps after having a few? - ed.]


The Examining Attorney referenced various bottle designs that included spirals on the outside, but none of the bottles was itself spiral. Moreover, there was "very little information" showing the designs in actual use.


More generally, the Board observed that the Examining Attorney "appears to have adopted the position that any bottle 'with a cylindrical base, narrow aperture at top and neck connecting the two' used for beverages lacks inherent distinctiveness." That, said the Board, "is not the law."

And so the Board concluded that consumers "will immediately regard Applicant's bottle design as identifying and distinguishing applicant's beverages and indicating their source."

Text Copyright John L. Welch 2010.

Precedential No. 47: TTAB Dismisses Opposition for Lack of Standing, Finds No Excusable Neglect Warranting Re-Opening of Case

Pro se Opposer Prakash Melwani was shown a quick exit by the TTAB in his opposition to registration of the mark ROYALSILK for "nonwoven medical gowns and non-woven surgical drapes." Melwani asserted that he mistakenly thought the case was suspended when Applicant Allegiance included in its answer a motion to strike one of his claims, and so he submitted no evidence or testimony during his trial period. The Board granted Applicant's Rule 2.132(a) motion to dismiss for failure to prosecute, denying Melwani's motion to re-open the case. Prakash Melwani v. Allegiance Corporation, 97 USPQd 1537 (TTAB 2010) [precedential].


Melwani pleaded ownership of three registrations for the mark ROYAL SILK for clothing and other goods, and alleged likelihood of confusion, deceptive misdescriptiveness, dilution, fraud, and "bad faith." Allegiance admitted in its answer that its goods are not made of silk and that the marks of the parties are similar. It embedded in its answer a motion to strike the "bad faith" claim.

Nearly a year later, after Melwani had done nothing since the filing of the answer, and after his testimony period had closed, Applicant moved to dismiss in view of Melwani's failure to take any trial testimony or offer any evidence.

Melwani asserted that he believed proceedings were suspended pending resolution of Applicant's motion to strike. He asked that the Board re-open the entire proceeding. Furthermore, he argued that there was sufficient evidence of record in view of Applicant's admissions and the fact that he identified his registrations on the TTAB form when he filed the notice of opposition electronically. Moreover, said Melwani, Allegiance had conducted a search in connection with a response to an office action during prosecution of the opposed application, and therefore Allegiance was "aware" of his registrations.

Opposer's failure to properly submit his registrations: The Board ruled that it is not enough for a plaintiff to identify his registrations on the TTAB electronic filing form. Although Rule 2.122 has been liberalized, the plaintiff must still submit appropriate documentation with its initial pleading in order to get its pleaded registrations of record. The rules do not contemplate "the mere inputting of a registration number when prompted by ESTTA." Opposer must electronically attach copies of the database printouts or otherwise comply with the rule.

The fact that completion of the ESTTA filing form results in the creation of electronic records in the Board's TTABVUE system, and that such records contain links to information on a pleaded registration, is for administrative ease and it is insufficient to make the pleaded registrations of record.

Therefore, Melwani could not rely on his registrations to support of his claims or to fend off the Rule 2.132 motion to dismiss.

TTABlog comment: Gotcha, Mr. Melwani! Does it make any sense that a plaintiff has to enter into the TTAB form the numbers of his pleaded registrations, and then has to supply the Board with printouts from the PTO's own database? No! I cannot understand why entering the numbers isn't enough. I call it "Catch 2.122."

The Motion to Re-Open: Good luck with that! The Board applied the Supreme Court's four-factor Pioneer test to determine whether Melwani had established excusable neglect. As usual, the Board said no.

Precedent says that the most important factor is "the reason for the delay." Here, Melwani's reason for inaction - his belief that the proceedings were suspended - was not reasonable. Melwani did not file papers in opposition to the motion or question the Board's failure to issue a suspension order. [The Board noted that it could easily overlook a motion that is embedded in the answer rather than presented as a separate filing.] In short, Melwani could have done something. He should have checked that status of the motion as well as the status of the proceeding.

The Board concluded that Melwani's reasons for inaction did not amount to excusable neglect that would justify a re-opening the case.

Other possible evidence: All that was left of Melwani's case was/were: the admissions in Applicant's answer and the matters of record in the file of the opposed application.

Allegiance did not admit that Melwani owned his pleaded registrations, nor did it admit the current status thereof. As to the search conducted by Allegiance, there was nothing to show that it uncovered Melwani's registrations, and in any case that would not excuse Melwani from establishing standing.

And so the Board ruled that Melwani "doe not have standing in this proceeding." And even if he had standing, the admissions by Applicant fell short of proving priority or likelihood of confusion, fraud, or deceptive misdescriptiveness.

And so the Board dismissed the opposition.

The Board observed, in footnote 19, that "if opposer had attached proper copies of his registrations as exhibits to the notice of opposition, making them of record, the Board might have been able to determine both standing and likelihood of confusion, based on a comparison of the marks and goods listed in the registrations and the application involved herein. However, the record still would be insufficient to determine opposer's other claims." [Ouch! - ed/].

TTABlog further comment: Suppose Melwani were to seek review of the Board's decision by way of a civil action under 15 U.S.C. Section 1071(b)? Since additional evidence is allowed in such a proceeding, could he then readily remedy his lack of standing by submitting his registrations into evidence in the district court?

Text Copyright John L. Welch 2010.

INTA's TM Topics Email List: If It Ain't Broke, Don't Fix It

My friend Lara Pearson, who recently started her own blog called Brand Geek, sent out an email on Monday concerning INTA's plan to move the popular and informative TM Topics list serv to a private platform. Seems like a bad idea to me. Lara explains below. What do you think?

As you know, INTA has decided to move TM Topics from a public to private platform on January 6, 2011. One practical effect of this is that after 01/06/2011 TM Topics will be open to INTA members only. ***

When I (and apparently others) raised this issue to Ralf, he suggested that [non-members] use the INTA LinkedIn Group in lieu of TM Topics. The problem is that the LinkedIn Group isn't comparable to TM Topics. The LinkedIn Group has 5000 members (more than the number of INTA members, I believe), while in contrast, there is great value in the intimacy and level of experience of the members of the TM Topics list. Further, posts on LinkedIn are limited to 200 characters. My signature block alone is 83 Characters! 200 characters is hardly enough space to express a fact pattern. I also know many PTO employees "lurk" on the list but are not allowed to post. They too no longer will be able to participate after January 6, 2011.

Lara suggests that, if you share her concern, you should contact Ralf or Jessica at INTA.
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Test Your TTAB Judge-Ability: Are "B.C. PIZZA" and "B&C PIZZA" Confusingly Similar?

Applicant sought to register the mark B.C. PIZZA for "dine in and carry out services featuring pizza and other Italian related cuisine and drinks," but pro se Opposer Satek, Inc. claimed likely confusion with its registered mark B&C PIZZA for restaurant services. Satek's brief was late, Applicant submitted no evidence or testimony, and the evidentiary record was "thin" [not sure about the pizza - ed.]. Was Opposer's claim more than half-baked? Satek, Inc. v. B.C. Pizza, Inc., Opposition No. 91171803 (November 30, 2010) [not precedential].


Yes. Satek's 2(d) claim may have been thinly supported, but it was not half-baked.

The Board excused Satek's tardy filing since the delay was minimal. Satek failed to properly submit its registration, but not to worry, since Applicant had counterclaimed for cancellation and did not dispute the status and title of the registration. Applicant dropped its improperly pleaded fraud counterclaims rather than re-plead them.

The Board found that the presumptions accorded Satek's registration pursuant to Section 7(b) of the Trademark Act (validity of the mark and the registration, ownership of the mark, and the exclusive right to use the mark with the recited services), coupled with the identity of the services and the near-identity of the marks, were enough to carry the day for Opposer. Not a surprise, eh?

And so the Board sustained the opposition.

TTABlog comment: There appears to be a lot of history between these two Michigan-based pizza shops. One is in Boyne City and the other in Bay City. That is enough to confuse me.

Are these two outfits really in interstate commerce? Should either of them have a federal registration?

Text Copyright John L. Welch 2010.

PTO Announces Change to TEAS e-Signature Approach

Here's a bit of inside baseball to perk up your week. On or about January 22, 2011, the United States Patent and Trademark Office (USPTO) will introduce a new approach for the e-signature process of the Trademark Electronic Application System (TEAS). See details here.

Currently, the originator of the signature request uses Field 1 of the "E-Signature(s) Request Form" to provide the e-mail address of the intended signatory, and Field 2 to provide a personal message. The mailbox TEAS@uspto.gov attempts delivery of the signature request to the listed address. In the event that delivery is not successful, an "undeliverable" notice is bounced directly back to TEAS@uspto.gov, and not to the originator of the request. ***

[T]he e-signature approach is being changed so that the e-mail address of the intended signatory will no longer be captured. Instead, the requestor will take direct control over the process. That is, rather than the request being sent to the signatory, it will first go right back to the requestor. The requestor will then FORWARD the request to the signatory.

Meanwhile, until the form is changed, the requestor may simply fill in his or her email address in Field 1, and when the resulting email is received, forward that email to the intended signatory with any desired message.
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TTABlog Tweets and Re-Tweets

If you are not a Twitter subscriber, you missed these recent TTABlog tweets and re-tweets:

RT @rtushnet Today's false endorsement problem: This product is available at Barnes & Noble. While it doesn't use any US Arm... http://bit.ly/e7CxsB

RT @uspto Today is the official federal holiday for Christmas - the Patent and Trademark Office is closed - http://ow.ly/385UH

China and Intellectual Property - http://nyti.ms/hzql4w

RT @GetLawyerJobs: Trademark Attorney - San Francisco, CA (http://tinyurl.com/35lcgr3) Lawyer #94102

Gibson wins injunction against Paper Jamz toy guitar maker bizjournals.com/nashville/morn… via @bizjournals

Port Huron, Michigan looks to renew 'Maritime Capital of the Great Lakes' trademark: http://bit.ly/hxnvhY

RT @abaipl Latest issue of ABA-IPL Landslide® magazine online. www.abanet.org/intelprop/landslide

RT @TheDomainBlog Xiha.com: After the UDRP http://wp.me/p11unt-63

Gerard F. Rogers has been appointed Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board #TTAB #trademarklaw

Restaurant Owner Defends 'Hon' Trademark - Baltimore News Story - WBAL Baltimore wbaltv.com/r/26193280/det…

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TTAB Affirms Refusal of "MTS TESTSUITE" - Applicant Failed to Comply with Disclaimer Requirement

Applicant MTS Systems put up a good battle but lost this disclaimer war. The Board affirmed a refusal to register the mark MTS TESTSUITE under Section 6(a) because MTS refused to disclaim the term "TESTSUITE." The Examining Attorney maintained that TESTSUITE is merely descriptive for MTS's goods: software for controlling equipment, which software "performs data analysis and generates reports about a physical specimen." The Board agreed, not because of the Examining Attorney's evidence but because of its own. In re MTS Systems Corporation, Serial No. 77702458 (December 6, 2010) [not precedential].


The Examining Attorney relied on website excerperts and a Wikipedia entry, in which "test suite" appears descriptively in connection with software used to test other computer programs. MTS argued that its software is different: it is "utilized along with testing equipment to determine characteristics of [a] physical specimen."

The Board recognized, but was unfazed by, that difference. It simply took judicial notice of dictionary definitions of TEST ("a means of testing") and SUITE ["a set of computer programs designed to work together and usually sold as a unit."].

Based on the dictionary definitions alone, set forth above, the word TEST clearly and unambiguously describes a significant feature of the software, namely, that it is software used in connection with testing. The word SUITE describes another feature which is that it is a set of software programs to be "utilized along with testing equipment to determine characteristics of [a] physical specimen." *** Regardless of what is being tested, whether computer programs or, in applicant’s case, physical equipment, the term TESTSUITE is descriptive of a suite of software programs used for testing.

The Board therefore affirmed the refusal but gave MTS thirty days to submit the required disclaimer.

TTABlog comment: It's one thing for the Board to take judicial notice when asked. Here, it wasn't asked. It appears that MTS never had the chance to argue against the Board's use of those two definitions. How fair is that?

Text Copyright John L. Welch 2010.

Baja Humbug? Affirming 2(d) Refusal, TTAB Finds Confusion Likely Between "BAJA" for Camping Trailers and Automobiles

Applicant Jayco, Inc. will have a bluer Christmas after the TTAB affirmed a Section 2(d) refusal of the mark BAJA for "recreational vehicles, namely, folding camping trailers," finding it likely to cause confusion with the identical mark registered for "automobiles and structural parts therefore [sic!]." The Board made a list of the relevant du Pont factors [not sure if it checked it twice - ed.], and concluded that even if the purchasers of these products exercise a "high degree of care," the other factors outweigh that one. In re Jayco, Inc., Serial No. 77619590 (December 2, 2010) [not precedential].


Examining Attorney Benji Paradewelai delivered a sackful of third-party registrations identifying both folding camping trailers and automobiles, as well as website pages showing that Volkswagen sells both, and other website pages where both automobiles and trailers are offered at retail.

The Examining Attorney also contended that trailers and automobiles are "complementary products that may be used together," citing an article and several website pages that say so. [hearsay? - ed.]

The Board concluded that these goods are related and the channels of trade the same, since the evidence shows that trailers and autos "may emanate from the same source, consumers use the products together and they may be purchased at a single location."

Jayco argued that folding camping trailers are purchased "by the most discriminating buyers, thereby preventing any likelihood of confusion." Both autos and trailers cost at least $10,000, according to Jayco. Not good enough, said the Board. Even recognizing that the purchasers "are likely to exercise a high degree of care," the Board observed once again that "even careful customers are not immune to trademark confusion, especially where, as here, the marks are identical."

And so the Board affirmed the refusal.

TTABlog comment: The "customer sophistication" argument seems to me to be a makeweight that the Board can use to tip the du Pont scale in whichever direction it wants to end up. Do you agree?

Text Copyright John L. Welch 2010.

Test Your TTAB Judge-Ability: Are "CORVOLTTE" and "CORVETTE" Confusingly Similar for Automobiles?

Pro se Applicant Jim M. Sweeney sought to register the mark CORVOLTTE for "electric vehicles, namely, automobiles," but General Motors opposed, claiming likelihood of confusion with its mark CORVETTE for automobiles. GM failed to provide proof of the fame of its mark and also failed to submit properly its registration for CORVETTE for automobiles. Guess who won? General Motors LLC v. Jim M. Sweeney, Opposition No. 91188584 (December 10, 2010) [not precedential].


GM, but apparently only with the help of a partial bail-out from Applicant Sweeney, who admitted in his answer that GM owns the registration for CORVETTE for automobiles and that GM has used the mark since 1952.

GM did manage to get several registrations into evidence via the status-and-title route, but not its "most relevant registration," the one for automobiles. It failed to comply with even the lenient approach permitted since Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926 (TTAB 2009) [precedential]. [TTABlogged here]: namely, submission of electronic records from TARR by way of a notice of reliance.

GM pleaded fame (and even included a dilution claim), but it did not provide any sales or advertising evidence, nor any proof of the extent of the mark's renown. Its reliance on a Wikipedia entry and several Internet excerpts was futile, since such evidence is not admissible to prove the truth of what these items say . In short, GM's proofs fell short. Moreover, as to its dilution claim, it failed to plead that its CORVETTE mark became famous prior to Sweeney's application filing date.

Nonetheless, the Board found the goods to be identical, and it therefore presumed that they travel in the same trade channels to the same classes of customers. [TTABlog query: Sweeney did not admit that the automobile registration was valid and subsisting, only that it was owned by GM, and so that registration was not properly in evidence. So it appears (and it's not very clear from the opinion) that GM had to rely on its common law rights to the mark CORVETTE for automobiles. Doesn't that mean that GM should have been required to prove its channels of trade and its classes of customers? In other words, without its automobile registration in evidence, is GM entitled to a presumption that its autos travel in the normal channels of trade to the normal classes of customers?]

As to the marks, since the goods are identical, the degree of similarity of the marks necessary to support a likelihood of confusion finding is decreased. The Board concluded that the appearance and sound of the marks are "more similar than dissimilar." As to meaning or connotation, the word "corvette" means a "lightly armed, fast ship." Applicant's mark suggests a connection with electricity. Nonetheless, the Board found the points of similarity in the marks to outweigh the dissimilarities.

Balancing the du Pont factors, it found the marks to be confusingly similar and it sustained the opposition.

TTABlog comment: This case nearly turned into a car wreck for GM. It could have won this case in a breeze, but it lurched and sputtered across the finish line, more like a Corvair than a Corvette.

Text Copyright John L. Welch 2010.

Fraud? TTAB Denies Another Summary Judgment Motion as Defendant Claims Innocence, Non-Falsity

In the fifteen months since the CAFC's decision in Bose, the TTAB has yet to find fraud. Moreover, given the subjective nature of the "intent" issue, the chances of the Board finding fraud on summary judgment are very slim to nil. Witness the Board's interlocutory ruling in this proceeding, in which Petitioner Factory Mutual seeks to cancel a registration for the F & Design mark shown to the right, for metal fasteners, claiming ownership of ten registrations for eight different certification marks (including the five design marks shown below) relating to product safety and testing services for manufacturers. Factory Mutual Insurance Company and FM Approvals LLC v. Fullco Industries, Inc., Cancellation No. 92050758 (December 17, 2010) [not precedential].


Factor Mutual moved for summary judgment on the ground of fraud, alleging (1) that Respondent Fullco, in its Section 15 incontestability declaration, made a material false statement, and (2) that Fullco, when it filed its original application, claimed use of its mark on goods for which it had admittedly not used the mark.

Section 15 Declaration: On March 22, 2010, Fullco filed a combined Section 8 and 15, averring that “there is no proceeding involving said rights [to the mark in its Registration No. 2830118] pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” Factory Mutual immediately moved to add a fraud claim to its cancellation petition, contending that this statement is "manifestly false" because the instant proceeding was filed nearly a year earlier. Fullco promptly filed a request to withdraw "the inadvertently filed Section 8 and 15 declaration" and replaced it with a Section 8 declaration that does not contain the same language. [i.e., Fullco dropped the Section 15 claim].

Fullco asserted that the false statement was the result of an innocent mistake and that it immediately sought to correct it when it first learned of the error via Petitioner's filing of the motion to amend. [Did someone fill out the wrong electronic form and send it to the client, who blindly signed it? - ed.]

The Board granted Factory Mutual's motion to add the fraud claim, but denied its summary judgment motion as to this issue. It agreed that the statement regarding "no other USPTO proceeding involving respondent’s rights in the mark" was false. Moreover, "the false statement is material inasmuch as, if not corrected, the registration acquires incontestable status."

The Board found this case analogous to the pre-Bose cases where "an applicant, prior to publication of its opposed application, corrected a misstatement regarding the identification of goods in the application. University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008). The Board found that this correction, occurring before publication of the mark, 'constitutes a rebuttable presumption that opposer lacked the willful intent to deceive the Office.'"

Here, the Board reasoned, Fullco's correction of the statement "prior to the USPTO’s acknowledgment of the Section 15 declaration serves as [gives rise to? -ed.] a rebuttable presumption that applicant’s intent was not to fraudulently mislead the USPTO. Petitioners have not overcome that presumption." And so the Board denied this part of the summary judgment motion.

TTABlog comment: This "rebuttable presumption" arising out of a filing "prior to the USPTO's acknowlegement" theory seems inappropriate here because a Section 15 declaration is effective on filing. (See Section 15(3) of the Trademark Act). Although Section 15 states that "The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof," nothing in Section 15 says that the declaration is effective only upon PTO acknowledgement of the filing. In other words, once filed, the Section 15 affidavit appears to be a done deal and the registration is at that point incontestable, regardless of whether the PTO acknowledges receipt of the filing.

It seems to me that the Board should have simply said that Respondent's claim of innocence raised a factual issue that precluded summary judgment. Forget the presumption here.

Non-use or Fraud: Factory Mutual relied on the deposition testimony of Fullco's president and CEO, wherein "he appears to state that the mark was never used with positive displacement pumps," and on an internal memo regarding the making of a "label" bearing the mark.

Fullco supplied a declaration and argued that "Mr. Fuller did not complete his deposition, and did not fully understand what was being asked." T\the memo was "taken out of context" and that and "there is no reason to believe [the author] incorrectly represented use of the mark to the USPTO."

Respondent disputes that it was not using its mark on all of the goods at the time of application and avers that it was using the mark with all of the goods consistent with its application. Respondent clarifies that the confusion came during the deposition because at one time the mark was on the packaging and then later was actually on the goods, except the positive displacement pumps which due to their design could only have the mark on the packaging, and a difference in understanding as to whether "positive displacement pumps" are encompassed by the product headings "machined part" or "hydraulics products."

The Board concluded that "there are genuine issues of material fact as to whether the mark was used on the goods at the time of filing the application, and respondent’s intent to commit fraud."

TTABlog further comment: This case well illustrates two obvious arguments in defending against a fraud summary judgment motion: (1) the allegedly false statement was not false; and (2) any error was inadvertent and innocent. Of course, provide a declaration to support your arguments. Either argument will likely create a genuine issue of material fact that will preclude the granting of a summary judgment motion.

TTABlog question: Section 15 incontestability relates to the right to use a mark, not the right to register. [Section 14 sets a five-year statute of limitations for challenging a registration, except for certain excepted grounds, regardless of whether the registration has been made incontestable.] Is the effect of Section 15 limited to civil actions? What role, if any, does incontestability play in TTAB proceedings? Is a registration (or mark) stronger because it is incontestable? Is it material to the PTO whether a registered mark is incontestable or not (other than the fact that the PTO must acknowledge receipt)?

Text Copyright John L. Welch 2010.

Frivolous Fraud Claims: A Suggested Sanction

I've run into several frivolous fraud claims recently, which led me to wonder whether the Board should issue some kind of sanction against attorneys and parties that make such bogus allegations. Of course, monetary sanctions are not possible, but mere dismissal of the fraud claim seems not enough. Then I got to thinking about Leo Stoller, perhaps the most sanctioned litigant in TTAB history. [Are such records kept?]


My favorite sanction comes from S Industries Inc. v. S&W Sign Co., Opposition No. 102,907 (Dec. 16, 1999) [not citable]. There, aside from Stoller's usual stunts regarding questionable mailing dates and service of papers, and his reports of non-existent settlement negotiations, Stoller also filed a groundless motion for summary judgment. That did it! The TTAB ordered Leo to copy by hand Rule 11 of the Federal Rules of Civil Procedure and certain sections of the Trademark Rules of Practice, and to file a signed copy thereof with the Board.

There you have it! Suppose the Board issued a similar sanction to an attorney and/or party that files a frivolous fraud claim? Require the attorney to copy by hand Rule 11, Fed. R. Civ. P., attach a copy of the Board's sanction ruling, and send it to the client for signature, following which the document must be filed with the Board? That would open up some eyes.

We might even call it a "Stoller sanction," in honor of you-know-who.

Text Copyright John L. Welch 2010.

Transcript of September 2, 2010 TPAC Meeting Now Available

The transcript of the September 2, 2010 meeting of the Trademark Public Advisory Committee (TPAC) is available here. The comments of TTAB Acting Chief Judge Gerard F. Rogers begin at page 129. Erik Pelton provided his summary of those comments here.

Erik's report on the November 23, 2o1o TPAC meeting may be found here.
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TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)

In a real snoozer, the Board reversed two refusals to register the mark ROC USA in standard character form [USA disclaimed], finding it primarily geographically descriptive of Applicant's various services relating to resident-owned communities, but further finding the mark registrable in light of Applicant's evidence of acquired distinctiveness under Section 2(f). In re Roc USA, LLC , Serial No. 77044525 (December 10, 2010) [not precedential].


There was no serious dispute that USA is geographically descriptive of the services. The Board "dismissed out of hand" Applicant's unsupported argument that USA is "too broad to convey an association between the services and the place named."

As to the meaning of ROC, the Examining Attorney relied on acronym listings and website pages wherein ROC is used as shorthand for "resident-owned communities." The Board rejected Applicant's argument that the Examining Attorney must show ROC to be either highly descriptive or generic to support the refusal. The question then was whether ROC "is descriptive to whatever degree, and whether it is insufficient to remove the mark from the prohibition of Section 2(e)(2)."

The Board concluded that ROC is merely descriptive of the services because the relevant public would understand ROC to refer to resident-owned communities. Moreover the composite mark ROC USA is primarily geographically descriptive of the services.

There is nothing about the combination of ROC and USA which renders the entire mark inherently distinctive. Both ROC and USA describe something significant about the identified services. There is no incongruity about the combination .... Also, the services are specialized and directed to a distinct segment of the public, those concerned with the establishment and administration of resident-owned communities or “resident ownership of manufactured housing communities.” This fact reinforces the conclusion that the relevant public would understand the meaning of both ROC and ROC USA.

However, the Board rejected the Examining Attorney's contention that the mark is "highly descriptive," since there is no evidence that anyone else uses this combination of words.

Turning to Section 2(f), the Examining Attorney argued that two years of use is not enough for acquired distinctiveness in light of the limited advertising and the highly descriptive nature of the mark. Applicant submitted several affidavits, copies of numerous media references, and letters from the Ford Foundation and resultant publicity related to a grant to Applicant.

The Board found the 2(f) evidence to be sufficient under the circumstances: the mark is not highly descriptive, and the recited services are "targeted to a narrow field, those interested in resident ownership of manufactured housing communities." It rejected the Examining Attorney's arguments, observing that it "would not expect to see applicant's mark advertised in the same manner as a mark for consumer goods."

And so the Board reversed the refusal to register.

TTABlog comment: Applicant was represented by Professor Ashyln J. Lembree with the assistance of three students (Nicole Wanty, Georgia Ellis, and Timothy Willis) from the University of New Hampshire School of Law (formerly Franklin Pierce Law School). Congratulations!

Text Copyright John L. Welch 2010.

TTAB Says Nevermind to Abandonment Claim in "NIRVANA" Bottled Water Cancellation

The Board denied a petition for cancellation of a registration for the mark NIRVANA for "bottled natural spring water," finding that Petitioner failed to prove its abandonment claim. Respondent did not submit any evidence or file a brief, but it was Petitioner's burden to prove either outright abandonment, or nonuse for three consecutive years to invoke the statutory presumption of abandonment, failing which Respondent bears no burden of proving use or intent to resume use. Nirvana, Inc. v. Nirvana For Health Inc., Cancellation No. 92042878 (December 1, 2010) [not precedential].


The Board first admonished Petitioner for wasting everyone's time by submitting more than 1,300 pages of documents and testimony at trial, the bulk of which were irrelevant to the question of abandonment. The Board then proceeded to toss out a number of Petitioner's documents as unauthenticated, or hearsay, or otherwise flawed.

A registration is presumed to be valid, and the party asserting abandonment must rebut this presumption by a preponderance of the evidence. It must establish, prima facie, that the registrant has discontinued use of the mark with no intent to resume use.

However, a party may establish a prima facie case of abandonment by presenting evidence that establishes nonuse of the mark for three consecutive years. That showing "creates a rebuttable presumption that the registrant has abandoned the mark without intent to resume use, and relieves the party claiming abandonment from the burden of affirmatively proving the registrant’s intent not to resume use."

Here, Petitioner wholly failed to prove its abandonment claim. It did not prove that Respondent had discontinued use with no intent to resume use, and it did not establish any three-year period of nonuse that would have created a presumption of abandonment. The evidence established only that Respondent was not using the mark at some point in July 2003, and was not using the mark on October 5, 2007, but Petitioner submitted no evidence that Respondent was not using the mark in 2001, 2002, 2004, or 2005.

Since Petitioner did not overcome the presumption of validity by establishing a three year period of nonuse, Respondent had no burden to prove that it had used the mark during that period or that it intended to resume use. [The Board noted that, had Petitioner taken appropriate testimony or served targeted discovery requests, it might have established nonuse during the relevant years.]

And so the Board dismissed the petition.

TTABlog comment: The rope-a-dope strategy employed here by Respondent is the same strategy that succeeded earlier this year in The North Face Apparel Corp. v. Gerald L. Baranzyk, Cancellation No. 92046488 (March 10, 2010) [not precedential] [TTABlogged here].

TTABlog quiz: If you were the petitioner here and were considering an appeal, what avenue would afford you an opportunity to submit additional evidence?

Text Copyright John L. Welch 2010.

Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition

Finding that Applicant lacked a bona fide intent to use its mark in commerce, the Board sustained an opposition to registration of AQUAJETT for "dental instruments, namely, oral irrigators." Applicant had no documentation to demonstrate the requisite bona fide intent, and neither its filing of a trademark application nor its "mere statement" that it intended to use the mark was probative evidence. SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300 (TTAB 2010), redesignated as precedential (December 10, 2010).


The Board drilled into the evidentiary record, finding major cavities: Applicant had "no plans relating to manufacture, licensing, marketing or use of the mark." The record was "devoid of any evidence such as manufacturing efforts, licensing efforts, test marketing, correspondence with prospective licensees, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like."

Applicant tried to fill the holes in its evidence by pointing to two patents for dental irrigators owned by its principal, Dr. William Weissman, but those documents do not demonstrate an intent to use the subject mark for the patented goods. Moreover, vague references to business plans and research and development, contained in the minutes of Applicant's annual meeting, were not enough.

Of course, the mere filing of an ITU application does not prove a bona fide intent (or else lack of bona fide intent would never be a ground for opposition or cancellation), nor does the mere statement that an Applicant has such an intent.

In short, Applicant failed to overcome "Opposer's showing that applicant lacked the requisite bona fide intent:"

The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use the AQUAJETT mark in connection with the identified goods convince us that applicant did not possess a bona fide intent to use the mark.

Applicant lastly contended that Opposer must show that Applicant acted in bad faith, and that Opposer's claim is in the nature of an accusation of fraud "that has neither been sufficiently pled nor proven by clear and convincing evidence." The Board, however, disagreed. No showing of bad faith is required to prove a lack of bona fide intent.

Text Copyright John L. Welch 2010.

Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"

Rejecting Attorney Richard M. Hoefflin's lame arguments, the TTAB affirmed a Section 2(c) refusal to register the marks OBAMA BAHAMA PAJAMAS, OBAMA PAJAMA, and BARACK'S JOCKS DRESS TO THE LEFT for pajamas and briefs, because the record did not include the written consent of President Barack Obama, the living individual identified in the marks. In re Richard M. Hoefflin, 97 USPQ2d 1174 (TTAB 2010) [precedential].


Section 2(c) of the Trademark Act "absolutely bars the registration of a designation that identifies a particular living individual absent written consent." In determining whether a particular living individual with that "name" would be associated with the mark, the Board must consider "(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used." In short, this provision of the Act "is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity."

Examining Attorney Karen Bush cited a January 2009 new story regarding the "obamification" that the nation had experienced over the year prior to Barack Obama's election as President: i.e., the manufacture of words from Obama's name. One "early online favorite" was "Obama pajama." The Board commended Ms. Bush for an "excellent job" in marshalling various media excerpts to demonstrate "the obvious - namely, that President Barack Obama is extremely well known." Each of the names "Barack" and "Obama" is "so closely associated with this particular historic individual that the usages of these names in applicant's three claimed trademarks will instantly create an association with the President."

Applicant Hoefflin feebly claimed that the terms "Barack" and "Obama" do not refer to any particular individual, and certainly not "the United States President Barack Hussein Obama II." The Board had no doubt, however, that the three marks refer to the 44th President of the United States. Section 2(c) is not limited in scope to full names, but encompasses "surnames, shortened names, nicknames, etc., so long as the name in question does, in fact, 'identify' a particular living individual."

Moreover, when an individual is so well known, he or she is entitled to the protection of Section 2(c) without having to show a connection with the involved goods or services. [E.g., EISENHOWER refused registration for greeting cards, PRINCE CHARLES for meat].

Applicant Hoefflin pointed to various third-party registrations for marks including given names like "George," "Ronald," and "Jimmy," but these names (unlike "Barack") are in common usage. And Hoefflin had the same problem with his surname evidence: the Examining Attorney showed that, while there are tens (if not hundreds) of thousands of persons having the surnames of the six immediate past presidents, the surname Obama appears in the same directory only 82 times.

Rejecting Hoefflin's assertion that the terms "Barack" and "Obama" are arbitrary and distinctive, the Board affirmed the refusal.

TTABlog comment: Do you think the term PALIN for lipstick would run into a Section 2(c) bar? How about for clothing? Greeting cards? Grizzly bear meat?

Did you note my clever heading? I went back and changed Friday's posting to Precedential No. 45.

Text Copyright John L. Welch 2010.

Precedential No. 45: TTAB Finds "NANDRIVE" Generic for Electronic Integrated Circuits

In yet another genericness case, the Board affirmed a refusal to register the term NANDRIVE, finding it generic for "electronic integrated circuits." Alternatively, it found the term to be merely descriptive and lacking in acquired distinctiveness. In re Greenliant Systems, Ltd., 97 USPQ2d 1078 (TTAB 2010) [precedential].


Examining Attorney Kelley L. Wells relied on a number of Internet web pages and dictionary definitions in contending that "applicant’s electronic integrated circuits are memory storage devices which utilize NAND flash memory technology or are flash memory drives. The applicant’s goods are NAND drives."

The Board found the genus of the goods to be "electronic integrated circuits," and further that this genus encompasses solid state flash memory drives. "In other words, while the broad category of goods in the present case may be electronic integrated circuits, there is a narrower category of solid state flash drives within that broad category." Relevant precedent holds that "registration is properly refused if the subject matter for registration is generic of any one of the goods for which registration is sought."

The Board then found "clear evidence to support a finding that the relevant public, when it considers NANDRIVE in conjunction with electronic integrated circuits, readily understands that term as identifying a type of electronic integrated circuit, namely, a solid-state flash drive."

The Board found the combination, or "telescoping," of the terms "NAND" and "drive" to be immaterial because any purchaser would recognize the combination as meaning NAND drive.

Applicant Greenliant pointed out that 48 of 52 hits for NANDRIVE in an Internet search referred to its devices, as did all 132 Lexis/Nexis hits. The Board was not impressed.

First, as indicated above, because applicant may be the only user of the compound term NANDRIVE, its internet and Lexis/Nexis hits are going to be heavily skewed to articles referencing applicant. Second, it is not clear to us how consumers will perceive the term NANDRIVE as used in the articles. *** There is simply no evidence to support applicant’s claim that consumers will perceive NANDRIVE or NANDrive as a trademark or anything other than a generic term.

Turning to the Section 2(e)(1) refusal, and assuming arguendo that NANDRIVE is not generic, Applicant relied on the fact that it is the only user of the term (beginning its use in 2007). But the Board was again not impressed: "This evidence merely demonstrates that applicant is the only company that misspells the term NAND drive, not that the relevant consumers of such products have come to view the designation NANDRIVE as applicant’s source identifying trademark."

The Board found that, given the highly descriptive nature of NANDRIVE, Applicant's 2(f) evidence fell "far short" of establishing distinctiveness. "Notably, the record contains little direct or circumstantial evidence that the relevant classes of purchasers of applicant’s goods view NANDRIVE as a distinctive source indicator for applicant’s goods." Moreover, Greenliant did not submit any evidence regarding its sales, advertising, market share, or renown in the field.

And so the Board affirmed the alternative Section 2(e)(1) refusal.

TTABlog note: Compare and contrast this decision with the recent, precedential THUMBDRIVE decision, which should be stored in your portable memory. Please limit yourself to only one bluebook.

Text Copyright John L. Welch 2010.

"FIRSTAIDE" Generic for Bandages and Kits, Says TTAB, Affirmingly

Perhaps Dr. Joseph Smith would like a second opinion, after the Board affirmed a genericness refusal of the term FIRSTAIDE for adhesive bandages, first aid kits, and various medical items. Alternatively, the Board found the term to be merely descriptiveness and lacking in acquired distinctiveness. In re Dr. Joseph Smith, Serial No. 77378967 (November 15, 2010) [not precedential].


The Doctor feebly argued that FIRSTAIDE is not a generic term for his goods because "first aid" is a service in the form of medical treatment, not a product. Moreover, he urged that a "first aide" may be an individual who provides first aid. And he asserted that FIRSTAIDE does not describe the goods but merely suggests a quality thereof.

Examining Attorney Barbara Gaynor argued that Applicant's goods include "first aid kits," and thus FIRSTAIDE is generic for such goods, in spite of its novel spelling. Moreover, even if it is not, Applicant's 2(f) evidence is insufficient. She relied on various website evidence regarding "first aid kits" and fourteen registration for marks that identify goods including first aid kits, and in which the term "first aid" is disclaimed.

The Board found "first aid" to be "a term of art with a clearly and widely understood meaning related to applicant's goods," and further that "first aid" is generic as applied to Applicant's goods. Furthermore, the term FIRSTAIDE, the phonetic equivalent of "first aid," is likewise generic. Applicant provided no evidence that the term FIRSTAIDE would be perceived as an assistant who performs emergency wound care, or seen as anything other than a slight misspelling of "first aid."

The Board acknowledged that FIRSTAIDE is used as an adjective rather than a noun in connection with Applicant's goods, but it is the generic name of a category or class of kits (like ATTIC for automatic sprinklers).

As to the issue of acquired distinctiveness (and assuming arguendo that FIRSTAIDE is not generic), Applicant submitted advertising and packaging for his goods and claimed substantially exclusive and continuous use of FIRSTAIDE in commerce for more than five years. The Board, however, found Applicant's evidence insufficient: "given the highly descriptive nature of the designation FIRSTAIDE, we would need a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted."

And so the Board affirmed the genericness refusal, and alternatively the mere descriptiveness refusal.

TTABlog comment: The Doctor's proof of acquired distinctiveness was quite lame. As to genericness, I haven't checked at my local drug store, but I seem to recall a sign saying "first aid" above the aisle where bandages and that stuff are displayed. Seems generic to me.

Joke: Guy sees his doctor, who tells him "you're way overweight." Guy says, "I want a second opinion." Doctor replies, "Ok, you're ugly too."

Text Copyright John L. Welch 2010.

Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition

The fame of the United States Postal Service's blue collection box design mark carried the USPS to victory in this Section 2(d) and 2(a) opposition. The Board found Applicant's mark (shown immediately below) for key return services and related goods, likely to cause confusion with the USPS mark and like to create a false association with the USPS. United States Postal Service v. Lost Key Rewards, Inc., 102 USPQ2d 1595 ( TTAB 2010) [not precedential].


Section 2(d): The USPS proved that it has used its collections boxes in the shape of the two registered marks shown below since about 1894, and since 1971 the boxes have been colored blue. There are some 180,000 collection boxes across the country.


The USPS extensively advertises and promotes its goods and services, with the blue collection box featured prominently. The Board found that the particular color blue "is as equally a prominent indicator of USPS origin as is the shape of the box alone."

The USPS also licenses the mark for a wide range of goods and services, including two licensees who use the blue box in connection with lost key services.

Applicant admitted the validity of the USPS mark and its awareness thereof. Its services will use USPS delivery services and mailboxes.

The Board concluded that the record "establishes without question that the USPS collection box, i.e., its shape and blue color, is 'famous' as that term is used in Trademark Law."

The broad exposure of the general public to the USPS collection boxes in the noted shape and color, as well as the representation of the collection boxes on stamps, in movies and other media have rendered the collection box in the noted shape and color a ubiquitous symbol of the USPS.

Moreover, the Board noted, as the fame of a mark increases, a lesser degree of similarity is necessary to show likely confusion.

Applicant's mark includes a collection box that is "substantially similar [to the USPS design] in certain key elements, namely, that it stands on legs, that it has a curved top, and that it is blue." The Board deemed the blue collection box in the applied-for mark to be at least equally prominent as the word portion, and it concluded that Applicant's marks is "sufficiently similar in at least appearance, connotation and commercial impression" to the USPS mark that, if used on similar or related goods/services, confusion is likely.


As to Applicant's goods and services, the Board observed that the services are identical to key return services rendered by the USPS's licensees. Applicant's goods are necessary and significant aspects of its services, and would be the same for the services of USPS's licensees. And so the Board concluded that the goods and services are sufficiently related to USPS's services that confusion is likely.

Section 2(a): There was no question that the USPS is an institution within the meaning of Section 2(a). Moreover, the round-top mailbox design "is a famous mark and a symbol that is ubiquitous and uniquely indicative of the USPS."

The Board ruled that Applicant's mark is a "close approximation of the identity of the USPS."

Because the evidence of record shows that competing private delivery services use collection box designs that are different in shape and color from the USPS collection box and from each other, applicant’s use in its mark of a collection box substantially similar to the USPS collection box points uniquely and unmistakably to the USPS.

In view of the fame of the USPS mark and Applicant's use of the blue collection box in its mark, consumers will be led to presume that applicant is connected with or authorized by the USPS.

And so the Board concluded that Applicant's mark falsely suggests a connection with the USPS in violation of Section 2(a).

TTABlog comment: I guess this Applicant should have sought a license, huh? Basically, it lost this key decision without any reward.

Text Copyright John L. Welch 2010.