TTAB Decides Fred Beverage's Motion to Amend, But Says It May Require Fee Before Deciding

Further to our posting of ten days ago [here], the TTAB has now taken up the motion of Fred Beverages, Inc. to amend its petition for cancellation to add four classes. In May 2010, the CAFC [here] reversed the Board's decision that had denied the motion to amend because it "was not accompanied by any payment or authorization to charge respondent's [sic] deposit account for any of the additional classes sought to be cancelled." The CAFC held the Board's ruling to be arbitrary and capricious.


On January 27, 2010, the Board granted [here] Petitioner Fred Beverage's motion to add four classes to the petition for cancellation (which originally had only one class), finding that Petitioner had adequately pleaded a claim for abandonment against those four classes. The Board, however, struck from that amended Petition, a request that the involved registration be cancelled in its entirety (12 classes) due to fraud as to the class 32 goods. The Board pointed out that Respondent had voluntarily surrendered its registration as to class 32, and that any fraud as to that one class of goods would not affect the other classes.

As the Board has recently noted, "each class of goods ... in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration." G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009). In view thereof, the relief sought by petitioner in paragraph 21 is unavailable and legally insufficient.

Petitioner was allowed until February 14, 2011 to pay the additional fee of $1,200 for the four added classes.

The Board asserted that the CAFC's decision did not prevent it from requiring the cancellation fee before deciding the motion. Here, however, it exercised its discretion not to require the fee first.

Petitioner's request for action states that the Board should consider the motion to amend "without regard to the fee issue." (Request, p. 1.) However, consistent with the court's comments, the Board maintains discretion to either grant or defer ruling on the motion to amend and set a subsequent deadline for payment of the underlying fee. See Fred Beverages Inc., supra, 94 USPQ2d at 1960. Because of the posture of this case, we exercise our discretion to take up the motion before requiring payment.

TTABlog comment: Is the Board correct in its interpretation of the CAFC's comments? The CAFC did not directly decide that issue, but only whether the Board could deny the motion because the fee was not paid when the motion was filed. But the CAFC did say this:

It therefore appears that the TTAB has no stated rule and no established practice of requiring that a supplemental cancellation fee be included with a motion for leave to amend a petition for cancellation. *** There is no basis on which to distinguish the circumstances of the present case from those in which the TTAB granted or deferred ruling on motions for leave and set a subsequent deadline for the payment of the underlying fee. (slip op., page 6).

The CAFC also pointed out (slip op., pp. 4-5) that "There is also no rule that such a fee, if tendered, would be refunded in the event that the motion for leave were denied." So even if the Board has discretion to require the fee first, before deciding the motion, does it make any practical sense? How would a party get its money back if the motion is denied? Doesn't it make sense to decide the motion first and, if granted, then require the fee for the amendment?

Text Copyright John L. Welch 2011.

The Top Ten TTAB Decisions of 2010 (Part II)

In Part II of this compilation [Part I was TTABlogged here yesterday], the second quintet of TTAB cases includes two interesting genericness rulings: the THUMBDRIVE decision in particular catching many by surprise. In a procedural tussle, the Board found that an Opposer's attempt to amend its pleading ran afoul of the prohibition on adding new grounds in a "Madrid opposition." The Board rejected a supposed "noncommercial use" defense to a claim of dilution. And in a long and instructive decision it dismissed likelihood of dilution and confusion claims based on the famous CITIBANK mark. [Additional commentary may be found at the corresponding TTABlog posting]. American Express Marketing & Development Corp. v. Gilad Development Corporation, 94 USPQ2d 1294 (TTAB 2010) [precedential]. [TTABlogged here]. Applicant Gilad sought to register GRAND AMERICAN EXPRESS for “transportation services, namely, transporting passengers by means of a 19th century replica train.” American Express claimed likely dilution of its family of AMERICAN EXPRESS marks. Gilad moved to add the affirmative defense of “noncommercial use,” asserting that it chose its marks as an allusion to a Currier and Ives lithograph titled American “Express” Train and the nineteenth century history and era it evokes. Therefore, Applicant argued, its marks, “in addition to their intended service mark usage, serve as a form of artistic expression.” The Board, however, ruled that Applicant’s proposed amendment would be futile because the “noncommercial use” defense to a dilution claim is not available in an opposition proceeding. First, in order to obtain registrations, Applicant is required to demonstrate use of its marks in commerce, and thus cannot claim that the use is noncommercial. Second, for dilution purposes, the mere use of another’s famous mark as a mark for its own goods or services, whether commercial or not, disqualifies Applicant from invoking this exception. In any case, Applicant’s use does not fall into any of the recognized categories for noncommercial use: parody, satire, editorial, and other forms of expression that are not part of a commercial transaction. O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010) [precedential]. [TTABlogged here]. Opposer Seacrets sought to amend its Notice of Opposition to add a new ground (lack of bona fide intent), but it ran into a major problem: the opposed application was a Section 66(a) Madrid Request for Extension of Protection, and Rule 2.107(b) prohibits such an amendment in a Madrid opposition. Opposer claimed that it was merely clarifying an existing ground, but the Board disagreed and it denied the motion. Opposer alleged that “Applicant lacks a bona fide intent to use SECRETS LINE ... and therefore, has committed fraud on the U.S. Patent and Trademark Office.” The proposed amendment would replace that allegation with this: “In violation of 15 U.S.C. 1141(f) Applicant lacked a bona fide intent to use SECRETS LINE ...(for certain goods and services).” Seacrets argued that the claim that Applicant lacked a bona fide intent was an element of its original fraud claim, and that the proposed amendment is therefore a permissible clarification of an existing ground. The Board found that argument unpersuasive: “[A]pplicant was apprised of only one ground by Paragraph 13 of the original notice of opposition, that of fraud. *** We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground.” In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential]. [TTABlogged here]. Taking a tough line on the issue of genericness, the Board ruled that “the designation ‘company’ cannot transform the name of the goods for which registration is sought into a trademark,” finding the term ELECTRIC CANDLE COMPANY to be generic for “light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures.” Alternatively, the Board found the phrase to be “incapable of identifying source for electric candles” under Section 23 of the Trademark Act. Coleman argued that ELECTRIC CANDLE COMPANY is not a compound term, that there are no examples of third-party use of the entire phrase, and therefore that Gould is inapplicable and American Fertility requires reversal. The Board, however, found the term to be generic under both approaches. “The record shows that ‘electric candle’ is a unitary generic term. *** The space between the generic terms ‘electric candle’ and ‘company’ does not disqualify this type of proposed mark from the Gould [compound word] analysis. If anything, the terms appearing as they should in normal usage make it even more common.” Moreover, the Board refused to read American Fertility, which governs genericness of phrases, to allow an applicant to take a clearly generic term and add a non-source identifying word and thereby create a trademark. And even if not generic, ELECTRIC CANDLE COMPANY is incapable of attaining source significance and thus unregistrable. In re Trek 2000 International Ltd., 97 USPQ2d 1106 (TTAB 2010) [precedential]. [TTABlogged here]. Many were surprised to hear the outcome of this case, in which the TTAB ruled that the USPTO failed to meet its burden to provide clear evidence that THUMBDRIVE is generic. The Board therefore reversed a refusal to register the mark for portable digital electronic storage devices. The record included “both trademark and generic uses [and] evidence of lack of competitor use,” which at a minimum created “doubt sufficient to tip the balance in favor of registration.” The Examining Attorney relied on Internet excerpts showing use of “thumb drive” generically for portable data storage devices. But Trek’s evidence showed that it coined the term in 2000, that its sales exceeded $4 million from 2002-2007, that it advertises and promotes the mark and authorizes others to co-brand and sell USB storage devices bearing the mark, and that it polices its mark. Noting that a genericness determination is an “all or nothing” decision and that the evidentiary burden is “heavy indeed,” the Board refused to take the “fatal step” of full “eradication” of Trek’s rights Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential]. [TTABlogged here]. Banking on the fame of the CITIBANK mark, Citigroup opposed registration of the marks CAPITAL CITY BANK, CAPITAL CITY BANC INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANK INVESTMENTS for banking and financial services. In a 68-page decision, the Board dismissed the opposition, finding no likelihood of confusion or dilution primarily in view of the differences in commercial impression engendered by the parties’ marks. “Since the commercial impression of applicant’s marks is the geographic designation CAPITAL CITY and the generic term ‘Bank,’ applicant’s marks are not similar in appearance, sound or meaning with opposer’s CITIBANK marks.” Furthermore, the Board found the absence of any reported instances of actual confusion to be significant, in light of the widespread advertising of the CITIBANK mark. As to dilution, the Board found that the CITIBANK marks became famous in 1983, after Applicant’s first use of the CAPITAL CITY BANK mark. Therefore Citigroup’s dilution claim failed for that reason alone. Moreover, since the marks were found to be too dissimilar for likelihood of confusion purposes, they perforce did not meet the "substantially similar" requirement for dilution. [Note: this decision is now on appeal: TTABlogged here]. Text Copyright John L. Welch 2010-11.

The Top Ten TTAB Decisions of 2010 (Part I)

For the umpteenth consecutive year, yours truly has chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year. Since the CAFC's Bose decision in August 2009 the Board has yet to sustain a fraud claim, but last year it did issue two important fraud decisions. It also sustained a dilution claim for the first time in seven years. In an important procedural ruling, the Board made life easier for TTAB parties via a new interpretation of Rule 2.122(e) as applied to the admissibility of Internet evidence. And it provided a new twist to the "well know mark" doctrine applicable to the protection of foreign marks in this country. [This posting is in two parts, the first five entries being set out below. Additional commentary may be found at the corresponding TTABlog posting].


Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 95 USPQ2d 1185 (TTAB 2010) [precedential]. [TTABlogged here]. Petitioner Löwenbräu’s fraud claim alleged that, according to its investigation, Respondent White Gold, at the time of filing its Statements of Use, was using its marks only on vodka and not on all thirty goods listed, and that Respondent had the requisite intent to deceive the USPTO. The Board found those fraud allegations to be sufficiently specific and particular to satisfy FRCP 9(b), and it denied Respondent’s motion to dismiss. White Gold contended that Löwenbräu must allege that “a specific individual knew of the withheld material information or of the falsity of the material misrepresentation, and withheld or misrepresented this information with a specific intent to deceive the PTO.” It further argued that it was, in any event, entitled to registrations covering vodka. The Board, however, pointed out that “the question is not whether petitioner has alleged that a nonparty ‘specific individual’ had the requisite intent, but rather whether petitioner has alleged with particularity that respondent, the defendant and owner of the subject Registrations, had the requisite intent.” As to keeping the registrations, but only for vodka, the Board observed that “In re Bose did not change the consequences of fraud, when it is proved. A finding of fraud with respect to a particular class of goods or services renders any resulting registration void as to that class.”

M.C.I. Foods, Inc. v. Brady Bunte, Cancellation No. 92045959, and Brady Bunte v. M.C.I. Foods, Inc., Cancellation 96 USPQ2d 1544 (TTAB 2010) [precedential]. [TTABlogged here]. In a second fraud ruling, one that will have far-reaching ramifications, the Board dismissed Bunte’s fraud claim in this consolidated proceeding because he failed to prove fraud “to the hilt.” Although MCI knowingly included in its application goods for which it had never used its mark CABO PRIMO & Design, it did so after obtaining advice of counsel, and therefore the Board refused to find the requisite deceptive intent. “[T]here is no evidence or testimony indicating that MCI was advised that it could not or should not apply for Mexican food products not identified by its … mark.” “[I]t was incumbent upon Bunte to establish such a factual basis by, for example, eliciting further testimony as to the actual advice MCI received … and whether or to what extent MCI relied on such advice. *** Bunte failed to show, by direct evidence, that MCI intended to deceive the USPTO or, by indirect evidence, that the Board could draw no reasonable conclusion other than that MCI intended to deceive the USPTO.” Although it denied the fraud claim, the Board ordered that the CABO PRIMO registration be restricted to burritos, the goods for which MCI had used the mark.


National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) [precedential]. [TTABlogged here]. For the first time in seven years the TTAB sustained a dilution claim, finding the mark THE OTHER RED MEAT for “fresh and frozen salmon” to be dilutive of the registered mark THE OTHER WHITE MEAT for “association services namely, promoting the interests of members of the pork industry.” Advertising expenditures, tracking studies, consumer surveys, and media references convinced the Board that THE OTHER WHITE MEAT is famous; moreover, its fame was well-established prior to the filing date of the involved application. As to blurring, the Board looked to the non-exclusive factors set out in Section 43(c)(2)(B). Based upon the results of a “well-designed” survey, it found that “a sizeable segment of the target population sees the two marks as similar.” The inherent distinctiveness of Opposer’s mark and the fact that Opposer’s use of the mark is “virtually exclusive” supported a finding of dilution by blurring. Voluminous evidence established that Opposer’s mark “has become part of the fabric of popular culture.” And finally, the Board surmised that “applicant’s principals may have believed it was permissible for applicant to create such an association,” another factor favoring Opposer.


Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential]. [TTABlogged here]. In this case of first impression, the Board ruled that a foreign trademark owner who has filed an ITU application may rely on the fame of its mark in the United States to support a dilution claim in an opposition. In other words, although the TTAB does not recognize the “well known mark” or “famous foreign mark” doctrine as a basis for preventing registration by another, the fame of the foreign mark in this country may support a dilution claim, provided that the owner has filed an ITU application for the mark. Fiat opposed registration of the mark PANDA for automobiles, asserting dilution of Fiat’s “internationally famous” marks FIAT PANDA and PANDA. Applicant moved to dismiss, arguing that Fiat “has no reasonable basis for damage in the absence of an allegation of ‘continuing prior use of any form of ‘Panda’ in the United States.’” The Board turned to the requirements of the Trademark Dilution Revision Act (Section 43(c)), which affords certain relief to the “owner of a famous mark.” The TDRA does not define the term “mark,” and so the Board looked to Section 45 of the Act for its meaning of “mark,” concluding that it must “at least recognize the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States.”


Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) [precedential]. [TTABlogged here]. In a significant new interpretation of Rule 2.122(e), the Board held that “if a document obtained from the Internet identifies its date of publication or date that it was accessed and printed, and its source (e.g., the URL), it may be admitted into evidence pursuant to notice of reliance in the same manner as a printed publication in general circulation.” [emphasis in original]. Opposer Safer proffered, in its notice of reliance, certain publications obtained from the Internet. In deeming them admissible, the Board acknowledged its obligation to “recognize and adapt to changes in technology, particularly the prevalence of the internet” and in so doing broadened the types of documents that may be introduced by notice of reliance. On the substantive side, the Board dismissed the opposition, finding the mark DEER-B-GON for “animal repellant used to repel deer and other ruminant animals and rabbits” not confusingly similar to the registered marks DEER AWAY and DEER AWAY PROFESSIONAL for deer repellant [DEER disclaimed]. In another interesting ruling on the strength of an incontestably-registered mark, the Board noted that the appellate courts are split on the issue, and held that incontestability “does not dictate that the mark is ‘strong’ for purposes of determining likelihood of confusion.”


Text Copyright John L. Welch 2010-11.

Who Was the Most Frequent TTAB Opposer in 2010?

The folks at Towergate Software, with TTABlog readers in mind, have compiled a list of the most frequent TTAB opposers for 2010. Twenty-seven entities filed ten or more oppositions; I list below the top twelve.

1. Kellogg North America Company - 70
2. Major League Baseball* - 56
3. Apple Inc. - 22
4. TeleTracking Technologies Inc. - 22
5. The Coca-Cola Company - 21
   
6. Sazerac Company, Inc. - 19
7. Guthy-Renker LLC - 18
8. E. & J. Gallo Winery - 17
9. Johnson & Johnson -16
10. PEI, Licensing Inc. - 16
11. PRL USA Holdings, Inc. - 16
12. Zuffa, LLC - 16
    

* Includes Major League Baseball, the individual teams, and the Office of the Commissioner.

Text Copyright John L. Welch 2011.

Despite Strength of "ALARIS" and Identity of Marks, Board Dismisses 2(d) Proceedings Due to Lack of Evidence that Medical Goods/Services are Related

Opposer Cardinal Health went one-for-five in this consolidated Section 2(d) proceeding, leaving one to wonder regarding Cardinal's evidence, "is that ALARIS?" [Get it? Is that all there is? LOL - ed.]. Cardinal claimed likelihood of confusion between its registered mark ALARIS for various medical products and related repair and rental services, and Defendant's marks ALARIS SELECT, ALARIS ADVANTAGE, and ALARIS for medical consulting services and franchising services in the field of medical and vocational rehabilitation primarily in the workers compensation industry, and the mark ALARISWARE for computer software used in the field of medical consulting. The Board agreed with Cardinal only as to the last mark. Cardinal Health 303, Inc. v. The Alaris Group, Inc., Oppositions Nos. 91177234, 91177365, 91177366, and 91177367, and Cancellation No. 92048172 (January 3, 2011) [not precedential].


The Board wasted little time in finding that the marks are similar. Cardinal maintained that its mark ALARIS is famous in the healthcare field, but the evidence did not support its claim. However, based on the facts that ALARIS is an arbitrary mark with no evidence of third-party use, the Board found it to be "a strong mark that is entitled to a broader scope of protection."

Cardinal contended that the similarity of the marks and the strength of its mark ALARIS were alone enough for a finding of likelihood of confusion, but the Board disagreed, noting that even when a mark is famous, more than that is required to prove likelihood of confusion. Otherwise, having a famous mark "would entitle the owner to a right in gross."

And so the Board turned to the issue of the relatedness of the involved goods and services. Cardinal claimed potential confusion in the home healthcare market. However, the Board found "no evidence that the patients purchase [Cardinal's] products directly or otherwise are involved in the decision to purchase a particular brand, nor has opposer provided evidence that patients actually not the brands for such products."

Moreover, the Board observed, "[t]he customers for applicant's services and goods are essentially insurance companies who are attempting to keep insurance costs down through the appropriate management of a patient's care. Its customers are not the nurses who actually care for patients, nor ... are its customers the nurse/employees of applicant's who do the case management."

In addition, nurses must be considered as "sophisticated about their field," and would not assume that all goods and services "having anything to do with the medical profession" must emanate from a single source just because they are sold under the identical mark.

And so as to Applicant's consulting and franchising services, "the lack of evidence of relatedness, and the sophistication of the users ... far outweigh the factors of the similarity of the marks and the strength of opposer's mark."

However, as to Applicant's ALARISWARE mark, its goods are "very similar or encompass" Cardinal's "computer programs for capturing, storing, integrating, and presenting data in patient care management systems." Even sophisticated purchasers "are likely to assume that these goods emanate from a single source."

And so the Board sustained Cardinal's opposition to registration of ALARISWARE, and dismissed the other three oppositions and the cancellation proceeding.

TTABlog comment: Now why do you suppose Opposer Cardinal was arguing that the identity of the marks and the strength of its mark should suffice for a likelihood of confusion finding?

Text Copyright John L. Welch 2011.

TTAB Applies Issue Preclusion, Grants Summary Judgment That "COCOA BUTTER FORMULA" Lacks Acquired Distinctiveness

E.T. Browne's application to register COCOA BUTTER FORMULA for personal care products was barred by the doctrine of issue preclusion in view of a ruling by the U.S. Court of Appeals for the Third Circuit that the phrase is merely descriptive and lacks acquired distinctiveness. Browne unsuccessfully argued that the opposition should be dismissed without prejudice because the appellate court's decision did not say that the phrase could never acquire distinctiveness. Cococare Products, Inc. v. E.T. Browne Drug Co., Inc., Opposition Nos. 91169074, 91162692, 91165288, and 91167122 (January 5, 2011) [not precedential].


In civil proceedings between the parties the Third Circuit reversed the District Court’s holding that COCOA BUTTER FORMULA is generic, but the appellate court also ruled that the phrase "cocoa butter formula" had not acquired distinctiveness. In the opposition, Opposer Cococare moved for summary judgment on the ground of res judicata.

The Board first ruled that claim preclusion did not apply because the claims are "manifestly different:" in the civil action, Cococare's counterclaim to cancel Browne's Supplemental Registration for COCOA BUTTER FORMULA and to amend Browne's Principal Registration for PALMER’S COCOA BUTTER FORMULA to disclaim COCOA BUTTER FORMULA, was based on genericness, whereas here its opposition is based on mere descriptiveness and lack of acquired distinctiveness vis-a-vis an application for
registration.

The Board then turned to the issue of issue preclusion, first noting that the parties here are identical to those in the civil action and that a final judgment on the merits was issue in the prior civil proceeding. The main question here was whether the claim in this opposition "is based on the same set of transactional facts as the claim in the civil action."

In the civil action, the Third Circuit had to decide the issue of whether COCOA BUTTER FORMULA had acquired distinctiveness for personal care products. Here, as in the civil litigation, "the claim of acquired distinctiveness of COCOA BUTTER FORMULA in the mark was based on a statement of substantially exclusive and continuous use in commerce for at least the five years immediately before the date of the statement."

The Board discerned "no material distinction" between the issue litigated in the civil action and the issue raised here, and so it found that "there is an identity of issue and that application of issue preclusion is appropriate." It therefore sustained the opposition.

However, the Board further noted (footnote 6) that "the issue of whether a particular designation has acquired secondary meaning is determined on the basis of facts existing as of the time registrability is being considered up to the close of testimony in an opposition proceeding, see General Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB 1984), applicant has failed to submit any evidence or otherwise argue that COCOA BUTTER FORMULA has acquired distinctiveness since the time the issue was considered in the civil proceeding, so as to distinguish the issues in the two proceedings."

In other words, Browne is not precluded from seeking registration in the future should it provide new and additional evidence of acquired distinctiveness.

Indeed, the Board has previously observed that "when the circumstances upon which a prior holding was based may no longer prevail or where significant intervening events may have occurred, the operation of the doctrine of collateral estoppel may be put aside in a subsequent proceeding between the same parties." Haymaker Sports, Inc. v. Turian, 197 USPQ 32, 39 (TTAB 1977), aff’d on point, rev’d on other grounds, 581 F.2d 257, 198 USPQ 610 (CCPA 1978). [footnote 6]

Text Copyright John L. Welch 2011.

FRED Beverage TTAB Case Still Dormant Eight Months after CAFC Fee Ruling

Since the CAFC's May 12, 2010 decision in Fred Beverages, Inc. v. Fred's Capital Management Company, 94 USPQ2d 1958 (Fed. Cir. 2010), the TTAB has yet to rule on Petitioner's motion for leave to amend its petition for cancellation. [TTABlogged here].


On June 26, 2009, the Board denied Petitioner's motion to add four classes to its petition for cancellation because the motion "was not accompanied by any payment or authorization to charge respondent's [sic] deposit account for any of the additional classes sought to be cancelled." The CAFC reversed the Board's decision, holding that the denial of Petitioner's motion was arbitrary and capricious.

Last week, Petitioner Fred Beverages filed a written request that the Board decide the motion on the merits, in accordance with the CAFC's directive.

Any bets on when and how the Board will decide the motion for leave to amend?

Text Copyright John L. Welch 2011.

Finding Bricks Related to Mortar and Grout, TTAB Sustains 2(d) Opposition to STONEL over STONFIL

Finding Applicant Stonel's bricks related to Opposer Stoncor's mortar and grout, the Board sustained a Section 2(d) opposition to registration of the mark STONEL & Design, finding the mark likely to cause confusion with the registered mark STONFIL. Opposer Stoncor claimed a family of "STON-" marks based on fifteen registrations for various products, but the Board found no family. Stoncor also claimed fame for its marks, but again it ran into a brick wall. Nonetheless, Opposer prevailed. Stoncor Group, Inc. v. Stonel Inc., Opposition No. 91177161 (January 19, 2011) [not precedential].


In support of its fame argument, Stoncor pointed to advertising, trade show participation, and nearly 12,000 sales calls made annually by its sales reps. It also submitted magazine reader surveys showing that its flooring ranked first. The Board pointed out, however, that Stoncor failed to submit sales and advertising figures that would place its "degree of success" in context.

Although Stoncor pleaded fifteen registrations for marks having the "STON-" prefix [Slyly seeking a Family STON- ? -ed.], the Board observed (again) that "the mere fact of adoption, use and/or registration of fifteen STON- marks does not in itself prove that a family of marks exists." [The marks must eat meals together, go to church together, and argue with each other to constitute a family - ed.]. Despite some evidence of "conjoint use" of some of Opposer’s marks, "the evidence falls short of showing that a family of STON- marks has been consistently promoted together."

Guess who?
As to the goods, the parties focused on Opposer’s flooring systems and Applicant’s prefabricated brick panels, but the Board instead zeroed in on the bricks in the application and the mortar and grout in Opposer's STONEFIL registration, "inasmuch as we find that they represent the closest relationship between the respective goods of the parties." The Board then got down to the nitty-gritty:

To state the obvious, “mortars” and/or “grouts,” on the one hand, and “bricks” on the other, are complementary building materials. These goods are used in laying bricks, and the mortar holds the bricks together. *** Bricks, mortar and grout could be purchased at the same time in the same store by the same individual for use in the same construction project.

Moreover, bricks and mortar may be purchased by "ordinary consumers for use in do-it-yourself projects around the home."

As to the marks, the Board observed that Opposer's mark STONFIL for goods including "mortars" and "grouts" presented "opposer’s strongest case." Not surprisingly, it found the word STONEL to be the dominant portion of Applicant's mark, and it opined that the marks "sound similar" Although each has no specific meaning, the Board noted that each may suggest the word "stones." In sum, it concluded that the similarities in the marks outweigh their differences.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are "PAULETTE" and "PAULETTE MACARON" Confusingly Similar to "PAUL" for Bakery Goods?

Holder Suisse S.A. opposed four applications to register the mark PAULETTE MACARON [MACARON disclaimed] and the marks PAULETTE in standard character form and in the two design forms shown below, for bakery goods and retail bakery shops, claiming likelihood of confusion with its registered mark PAUL for goods including flour, bread, and pastry. The Board found PAUL to be a strong mark, and the key issue was the similarity or dissimilarity of the marks. Would you sustain the oppositions? Holder Suisse S.A. v. Paule and Gerard Koumetz, Consolidated Opposition Nos. 91181892, 91181896, 91186200, and 91186198 (December 27, 2010) [not precedential].


The Board wasted little time in finding Opposer's goods to be related to Applicant's goods and services, the trade channels to be the same, and the classes of purchaser overlapping. Furthermore, the goods presumably include low cost bakery items bought with little or no deliberation. The Board noted that purchasers of such impulse items "are held to a lesser standard of purchasing care and are more likely to be confused as to the source of the goods."

Opposer contended that its mark is famous, having been in use for more than 100 years worldwide, but its evidence fell "far short of demonstrating widespread recognition of its PAUL mark among the general public in the United States." Evidence of fame in Europe is irrelevant to fame in this country [Doh! - ed.], and Opposer failed to offer and evidence of consumer recognition or sales figures here. However, the record supported a finding that the mark PAUL is strong "to the extent we must recognize that it is an inherently distinctive mark, also in view of opposer's evidence of media coverage and ... the lack of evidence of relevant third-party uses in the record."


Turning to the specific marks at issue, the Board first considered PAULETTE in standard character form. It perceptively noted that PAULETTE "merely adds a syllable to opposer's PAUL mark." Moreover, as to meaning, PAULETTE is defined as "the French diminutive of PAUL." [Are we in France? ed.] As a result the marks are "highly similar."

Next the Board took a bite out of PAULETTE MACARON, concluding that PAULETTE is the dominatrix of that mark since MACARON is disclaimed. The Board therefore found this mark to be "highly similar" to the registered mark PAUL. [I suspect that to most Americans, PAULETTE MACARON sounds like a woman's full name and is therefore quite different from PAUL. - ed.]

As to the first design mark, it is "highly similar" in appearance to the mark PAUL. Applicant argued that the double "t's appearing in the mark represent two sides of a "macaron," but the Board found that "not sufficient "to create a commercial impression that is separate from that of opposer's PAUL mark." And even if consumers recognize the double-t design as a macaron [highly unlikely, I think - ed.], that stylization "merely adds a highly descriptive connotation to applicant's mark that is subordinate to that created by" the mark as a whole.

Finally as to the second design mark, the circular design is insufficient to distinguish it from Opposer's mark.


Applicant pointed to four years of use without any actual confusion, despite substantial press coverage. However, the Board shrugged off that evidence, pointing out the lack of evidence that "the same segments of the public have been so exposed" to the marks that a substantial opportunity for confusion has incurred.

Lastly, the Board refused to find bad faith on the part of Applicant, pointing out that mere knowledge of Opposer's mark does not, by itself, constitute bad faith.

And so the Board sustained the oppositions.

Text Copyright John L. Welch 2011.

Applying Issue Preclusion, TTAB Grants Summary Judgment In Clash of the Star Registries

The Board granted Applicant ISR's motion for summary judgment on the ground of res judicata, based on a prior Board decision in a consolidated proceeding between the parties. ISR had previously successfully opposed Vaughan's applications to register the mark NAME A STAR for goods and services relating to the naming of (celestial) stars, on the ground of genericness and, alternatively, mere descriptiveness and lack of secondary meaning. Here, Vaughan opposed ISR's application to register the mark shown below for similar goods and services. Tonya S. Vaughan v. International Star Registry of Illinois, Ltd., Opposition No. 91163697 (January 3, 2011) [not precedential].


Vaughan claimed likelihood of confusion based upon her alleged rights in the term NAME A STAR for star-registration goods and services. Applicant ISR moved for summary judgment, contending that "the issue of no assertable trademark rights held by Vaughan has already been resolved" and that Vaughan "is estopped and barred from relitigating its contention that it has protectable trademark rights in 'name a star' as a matter of law, since this factual issue and the legal claims of Vaughan were already litigated and decided against Vaughn [sic]."

Vaughan argued that only her trademarks, and not her trade name NAME A STAR, was involved in the earlier proceeding.

The Board first ruled that claim preclusion does not apply here because the claims are different (genericness and mere descriptiveness in the first proceeding, likelihood of confusion here), and Vaughan's trademark applications are not at issue here.

Issue preclusion (collateral estoppel), however, does apply. "The issues of genericness and secondary meaning in the designation NAME A STAR as it relates to star-registration services and goods relating thereto were actually litigated in the prior consolidated proceeding." Determination of the issues of genericness and secondary meaning was necessary to the summary judgment in the earlier consolidated proceeding. And Vaughan was afforded a full and fair opportunity to litigate those issues in the earlier proceeding.

Here, Vaughan cannot prevail without establishing a proprietary right in NAME A STAR. "In order to do so, Vaughan must establish that NAME A STAR in relation to her star-registration goods and services is neither generic nor merely descriptive without secondary meaning. This is the very issue that was litigated and adjudged in the prior consolidated proceeding."

As to Vaughan's attempt to distinguish between trademarks and trade names, "it is a distinction without a difference."

The Board therefore applied issue preclusion, and ruled that Opposer Vaughan "cannot establish any legal basis for her claim of damage or demonstrate any likelihood of confusion as to source."

TTABlog comment: If Vaughan's mark had been found only merely descriptive but not generic, she might have avoided issue preclusion by arguing that circumstances had changed: i.e., that the mark had acquired distinctiveness subsequent to the earlier Board decision.

Text Copyright John L. Welch 2010.

TTAB Issued 50 Precedential Decisions in 2010

Here is a compilation of the TTAB's precedential opinions/decisions for the calendar year 2010, categorized according to subject matter. Be warned that occasionally an interlocutory ruling escapes my attention because it is not included in the FOIA final decision database. [Please report any broken links to me: jwelch at lalaw dot com.]


Section 2(a) - disparagement:

• Precedential No. 10: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

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:

• Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery
• Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations
• Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution
• Precedential No. 31: Opposer Fails to Prove Priority, Non-Use, and Fraud in "BLACK BELT TV" Brouhaha
• Precedential No. 27: Finding Computer Software and Services Related, TTAB Affirms 2(d) "ACTIVECARE" Refusal
• Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal
• Precedential No. 13: Divided TTAB Panel Dismisses "VIGILANZ" Opposition, Finding Purchasers Sophisticated and Goods Not Related
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition
• Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing
• Precedential No. 1: TTAB Yawningly Affirms 2(d) Refusal of "MAX & Design" Over "MAX" for Overlapping Insurance Services

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

• Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

Section 2(e)(5) - Functionality:

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

Section 2(f) - acquired distinctiveness:

• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive
• Prededential No. 34: TTAB Affirms Refusal to Register "Beer Glass and Stand" Packaging for Lack of Distinctiveness
• Precedential No. 32: TTAB Finds Bands on Mag Rechargeable Flashlight Functional, Lacking in Acquired Distinctiveness
• Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents

Section 10 - Improper Assignment:

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

Abandonment:

• Precedential No. 29: TTAB Dismisses "ECSTASY" Cancellation - Petitioner Proves Standing, But Not Abandonment or Fraud

Dilution:

• Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution
• Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years
• Precedential No. 14: Noncommercial Use Defense to a Dilution Claim Unavailable in a TTAB Proceeding
• Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

Failure to Function

• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive
• Precedential No. 39: TTAB Re-Designates "ONCE A MARINE ..." Decision as Precedential
• Prededential No. 34: TTAB Affirms Refusal to Register "Beer Glass and Stand" Packaging for Lack of Distinctiveness

Fraud:

• Precedential No. 36: TTAB Refuses to Find Fraudulent Intent Where Applicant Relied on Advice of Counsel
• Precedential No. 16: Fraud Claim Survives Motion to Dismiss; Facts Pleaded with Sufficient Particularity
• Precedential No. 2: TTAB Okays Fraud Pleading But Denies Summary Judgment on Intent Issue

Genericness:

• Precedential No. 45: TTAB Finds "NANDRIVE" Generic for Electronic Integrated Circuits
• Precedential No. 43: TTAB Reverses Genericness Refusal of "THUMBDRIVE" for Portable Storage Devices
• Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs

Lack of bona fide intent:

• Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition
• Precedential No. 28: Finding Lack of Bona Fide Intent, TTAB Sustains "MITHRIL" Opposition
• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Priority:

• Precedential No. 41: Parties File Cross-Motions for Summary Judgment, then Opt for TTAB's ACR Procedure to Resolve Cancellation
• Prededential No. 33: Opposer Proves Priority Based on Sale of Ventilators for Test Purposes

Res judicata:

• Precedential No. 48: TTAB Enters Summary Judgment, Ruling That Res Judicata Bars Cancellation after Defaulted Opposition
• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Standing:

• Precedential No. 38: "COACH" Loses Triple-Header: 2(d), 2(e)(1), and Dilution
• Precedential No. 29: TTAB Dismisses "ECSTASY" Cancellation - Petitioner Proves Standing, But Not Abandonment or Fraud

Use in Commerce/Drawing/Specimen of Use:

• Precedential No. 49: Following First Niagara, TTAB Rules That Foreign Owner Sufficiently Pleaded Use of Mark in USA
• Precedential No. 26: "OSMODEX" Specimens Fail to Show Use as Service Mark, TTAB Rules
• Precedential No. 25: "CLOTHING FACTS" Not Functioning as a Trademark, Says TTAB
• Precedential No. 18: TTAB Affirms Rejection of Trademark Specimen as Mere Advertising and not Point-of-Sale Display
• Precedential No. 15: TTAB Affirms Rejection of Website Specimen for Goods, Ordering Information Lacking

TTAB Discovery/Evidence/Procedure:

• Precedential No. 48: TTAB Enters Summary Judgment, Ruling That Res Judicata Bars Cancellation after Defaulted Opposition
• 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
• Precedential No. 37: TTAB Says Filing of Summary Judgment Motion Does Not Automatically Suspend Proceeding
• Precedential No. 35: Amazon Spanked Again in TTAB Discovery Ruling
• Precedential No. 30: TTAB Strikes Counterclaim Allegations Based on Ex Parte Prosecution Errors, but Okays Section 10 Abandonment Claim
• Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)
• Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition
• Precedential No. 19: TTAB Snoringly Rules on Motions to Compel Production and to Exclude Trial Witness
• Precedential No. 17: TTAB Says Section 18 Not Available for Requiring Disclaimer of Generic Part of Mark Registered for More Than 5 Years
• Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB
• Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance
• Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures

©John L. Welch 2010-2011.

Recommended Reading: "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice"

Linda K. McLeod (former TTAB judge) and Stephanie H. Bald discuss "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice" in the latest issue of the John Marshall Review of Intellectual Property (10 J.MARSHALL REV. INTELL. PROP. L. 365 (2011)). [pdf here].

ABSTRACT: The conduct of practitioners and agents before the U.S. Patent and Trademark Office (“USPTO” or “Office”) is subject to regulation by the Office under 35 U.S.C. § 2(b)(2)(D). This provision grants the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO the authority to establish regulations to govern the conduct of agents, attorneys, or other representatives before the Office, including establishing disciplinary measures for non-compliance with those regulations. The USPTO regulations governing conduct include the Patent and Trademark Office Code of Professional Responsibility. This article summarizes the key canons and disciplinary rules applicable to trademark practitioners and authorized representatives; outlines common ethical issues for practitioners and other authorized representatives that arise in ex parte and inter partes trademark proceedings before the USPTO. This article also discusses the case law that has developed relating to these issues. Although the practice of law is generally regulated by State ethics rules and regulations, trademark practitioners and authorized representatives should be equally familiar with the separate set of USPTO regulations governing their conduct before the Office. Additionally, although the USPTO canons and disciplinary rules are based on the Model Code of Professional Responsibility of the American Bar Association (like some State ethics codes), there are a number of ethical issues unique to the conduct of trademark practitioners and agents before the Office. Failure to adhere to these unique rules and regulations can result in disciplinary action by the USPTO that compounds or even exceeds any disciplinary action by the State.

In the realm of fraud on the USPTO, the authors note that "the USPTO’s regulations governing conduct before the Office require an 'inquiry reasonable under the circumstances' to confirm that 'allegations and other factual contentions have evidentiary support.' Thus a duty to investigate the accuracy of statements made to the USPTO is set forth in the rules." However, there have been "no reported cases of disciplinary action by the Office of Enrollment and Discipline on grounds of misconduct and/or neglect under 37 C.F.R. §§ 10.23 and 10.77 or other violations."
.

CAFC Hears Oral Argument in Citigroup v Capital City Bank

The CAFC heard oral argument on Friday, January 14th, in Citigroup's appeal from the TTAB's decision in Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential].[The TTAB decision is TTABlogged here]. An mp3 of the oral argument may be found here (Appeal No. 2010-1369).


Appellant Citigroup argued that, in its du Pont analysis, the Board failed to properly consider a possible variation of Applicant's CAPITAL CITY BANK standard-character mark that de-emphasizes the word CAPITAL and emphasizes the term CITY BANK. Appellee urged that such a variation would not be reasonable in light of the 115-year history of use of the CAPITAL CITY BANK mark, and even so there was no evidence that any imagined variation would be likely to cause confusion.


Text Copyright John L. Welch 2011.

TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Petitioner Littel Concepts apparently had little concept of how to win a TTAB cancellation proceeding. Littel sought to strike a registration for the mark ATL'S BADDEST CHICKS for "presentation of live performances," claiming prior rights in the same mark for similar services, and accusing Respondent Striker of fraud. But after barely clearing the miniscule standing hurdle, Littel failed to prove ownership of its alleged mark and, even if it had, failed to prove fraud. Littel Concepts, LLC v. Striker Records, Inc., Cancellation No. 92050431 (December 27, 2010) [not precedential].

(click on photo for larger picture)
Standing: Petitioner claimed standing based on the refusal of its application over the Respondent's registration. That would have sufficed, but Littel put in no evidence at all, not even a copy of the office action refusing its application to register. However, the file of the targeted registration, which was automatically of record, included the specimen of use submitted by Respondent (the poster above). Near the bottom, that poster includes the wording "For more info log on to www.littelconcepts.net, WWWV-103.com, or call 404-607-8772."

Petitioner Littel claimed in its petition and in its brief that it was the producer of the concert referred to in the poster. Respondent denied it. Despite the lack of testimony from Littel, the Board decided to "assume and find (charitably to petitioner) that the URL and the telephone number appearing on the poster are petitioner's." Therefore, the Board concluded, Littel has "some sort of connection" to the concert and is not a mere intermeddler here. Under the lenient standard for standing, Littel passed the test.

Ownership: However, Littel failed to meet the "more stringent" standard for proving that it owned common law rights in the mark ATL'S BADDEST CHICKS. The only evidence of record was the concert poster, which "does not establish that Littel was the producer of the concert, any more than the similarly-placed reference to the website of the radio station." Petitioner's logo appears at the bottom of the poster, but only along with six similarly-sized logos, and various other entities are also identified on the poster. And so the Board could not conclude that Littel, rather than any of the other entities, was the producer of the concert. And even Little were the producer, the poster does not establish that Littel owned the mark or that it has any prior rights vis-a-vis Respondent.

Because of this lack of proof of ownership, Littel's claims of likelihood of confusion and fraud were dead.

Fraud: Nonetheless, the Board went on the review what it considered to be a fraud claim asserted by Littel.

We construe petitioner’s allegation that respondent’s registration should be cancelled because respondent filed its application for registration of the mark “with full knowledge of Petitioner’s prior use...” as an allegation that respondent committed fraud in executing the application declaration verifying that

"To the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive..."

Trademark Act Section 1(a)(3)(D), 15 U.S.C. §1051(a)(3)(D).

Even if Littel had proven superior rights in its mark, it did not prove that Striker had actual knowledge that "petitioner's asserted rights in the mark were superior to its own and that, due to such knowledge, respondent had no reasonable basis for believing that it was entitled to the registration it applied for."

Ownership of the Registration: In one final bizarre twist, Littel pointed to Respondent's answer, wherein Striker's general denials included a denial of an allegation that it owned the registration at issue. The Board refused to credit that denial because Littel did not assert lack of ownership as a ground for cancellation and because any purported admission by Striker was offset by Littel's assertion in its petition that Respondent is the owner.

Additionally, respondent’s “admission” that it was not the owner of the registration is not an admission that it was not and is not the owner of the registered mark itself, which would actually be a ground for cancellation of the registration. [Would someone please explain this statement to me? I don't get it. - ed.]

The Board therefore concluded that Respondent's admission "does not suffice as a ground for cancellation."

TTABlog comment: If Littel really thought that it could win on the basis of Striker's admission of lack of ownership, why didn't Littel move for summary judgment or judgment on the pleadings? Maybe it didn't want to red-flag the issue too early, lest Respondent correct its answer.

Text Copyright John L. Welch 2010.

Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

In its first precedential decision of 2011, the Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, finding it to be functional for "motorcycle stands." Alternatively, if not functional, the configuration lacks Section 2(f) acquired distinctiveness. In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011) [precedential].


Functionality: The Board applied the Morton-Norwich factors, first perusing a utility patent owned by Applicant. The Board found that, although the configuration is not identical to the patented invention, "[t]he proposed mark adopts a significant portion of the invention disclosed in the patent; it is not merely an ornamental, incidental, or arbitrary aspect of the motorcycle stand."

In view of the facts that the drawing of the invention in U.S. Patent No. 7,000,901 incorporates the proposed mark, the "detailed description of the invention" describes the proposed mark, and Claim 1(a) of the patent claims the proposed mark as part of the subject matter of applicant’s invention, we find that the patent is prima facie evidence that the proposed mark is functional. In the face of this showing, it was incumbent upon applicant to rebut why the patent does not disclose the utilitarian advantages of the proposed mark.

Applicant argued that there are alternative designs for motorcycle stands, but he failed to explain "why the design of the supporting base of the stand, as shown in the proposed mark, is not essential to the function or purpose of the motorcycle stand or why it did not affect quality of the product. Thus, the applicant has failed to carry the 'heavy burden of showing that the feature is not functional.'"

Furthermore, advertising by Applicant’s competitors tout the utilitarian advantages of motorcycle stands similar in design to the proposed mark. Although Applicant claimed that there are 85 alternative designs for motorcycle stands, the Board noted that "the availability of alternative designs does not convert a functional design into a non-functional design." Here, "registration of the claimed matter could well hinder competitors who would not know if the features they used in the supporting base of their motorcycle stands, whose overall configurations are not dissimilar from those of applicant, might well subject them to a suit for trademark infringement."

As to the fourth factor, the Board found that "the cost and complexity of manufacturing applicant’s product design is comparable to some of his competitors. Nevertheless, even if applicant’s motorcycle stands with this design are more costly to produce, a higher cost does not detract from its functionality."

As stated in TrafFix, 58 USPQ2d at 1006, a product feature is functional “when it affects the cost or quality of the article.” (Emphasis added). Thus, even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patent, a superior motorcycle stand.

The Board therefore affirmed the functionality refusal, concluding that "the proposed mark is an efficient and superior design for the supporting base of a motorcycle stand and, thus, functional."


Acquired Distinctiveness: For the sake of completeness, and observing that a functional design is flat out unregistrable, the Board nonetheless considered the alternative refusal based on lack of acquired distinctiveness. [Of course, a product design cannot be inherently distinctive - ed.]

Applicant claimed 16 years of continuous and exclusive use of the design. He submitted 14 declarations from consumers, 23 "consumer surveys," and proof of intentional copying by infringers. Not good enough, said the Board.

"First, applicant’s 16 years of use is substantial but not necessarily conclusive or persuasive considering that its mark is a product configuration." Popularity or commercial success of the product do not automatically demonstrate that consumers recognize the shape as a source indicator.

Applicant declined to provide sales figures (on the ground of confidentiality), nor did he provide information regarding advertising expenditures or market share.

Applicant's "surveys" were merely questionnaires filled out by people at motorcycle events, and the Board treated them as mere declarations. The 14 declarations were signed by individuals who had also filled out the survey, and so there were 23 respondents in all, not 14 plus 23. Six survey responses were ambiguous, casting doubt on three declarations as well. That left 16 unambiguous surveys/declarations, according to the Board. [Not sure how the math works out here - ed.] The Board was not impressed:

To put the matter simply, that 16 people in the entire “Sportbike Motorcycle/Motorsports Industry” through applicant’s 16 years of doing business, have come to recognize applicant's product configuration as a trademark for motorcycle stands is not persuasive.

Finally, the Board refused to accept Applicant's evidence of copying as probative of acquired distinctiveness because ""[w]here the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse customers as to the source of the product.

And so the Board affirmed the alternative refusal.

TTABlog comment: Once a utility patent is involved, you might as well get on your motorcycle and ride out of town. You're wasting your time trying to convince the Board that your application for registration will stand.

Text Copyright John L. Welch 2011.

TTABlogger will host a Luncheon Table Topics at INTA 2011 on ... Guess What?

"TTAB Hot Topics," that's what! Tuesday, May 17th, 1:15 - 3:15 PM. Be there, or be square.

Has the Oldest Pending TTAB Case Reached the End of the Line?

Is the end near for the oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, filed on September 9, 1982? [last TTABlogged here]. After nearly 25 years of suspension, the case was revived last year. In March 2010, the Board issued a new testimony schedule, assigning Petitioner a testmony period closing on December 29, 2010. Last week, Respondent filed a motion to dismiss under Rule 2.132(a) because Petitioner took no testimony and submitted no evidence.


Well, if this is the end of the line for this cancellation proceeding, one must ask: what case will take its place as the oldest pending TTAB proceeding?

Text Copyright John L. Welch 2009-10.

Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery

The Board reversed a refusal to register the mark WACKER NEUSON for work machines for the building and the building material industries, finding it not likely to cause confusion with the registered mark NEUSON for "construction machines, namely, excavators." Applicant dug itself out of the 2(d) hole by submitting a consent agreement and a license from the Registrant, which the Board found sufficient to outweigh the other du Pont factors. In re Wacker Neuson SE, 97 USPQ2d 1408 (TTAB 2010) [precedential].


There was little dispute that the marks are similar and the goods related. The Examining Attorney argued that the consent was "naked" and that the facts did not support a finding of "unity of control" such that applicant and registrant could be considered the same source.

The Board reviewed the law as to "how much weight should be given to a consent agreement and the perspective on what constitutes a single source." First, for background, it revisited the CAFC's statement regarding the PTO's role in In re Four Seasons Hotels Ltd., 26 USPQ2d 1071 (Fed. Cir. 1993):

Believing that its role in enforcing section 2(d) of the Lanham Act is to second-guess the conclusions of those most familiar with the marketplace, the PTO "is, at times, like a cat watching the wrong rat hole." The role of the PTO is not in "deny[ing] registration if it feels there is, by its independent determination, any likelihood of confusion of any kind as between the mark sought to be registered and the prior registration, without regard to the desires, opinions or agreements of the owner of the prior registration. ..." *** Rather, the PTO’s role is to protect owners of trademarks by allowing them to register their marks. Denial of registration does not deny the owner the right to use the mark, and thus, will not serve to protect the public from confusion. "No government could police trademark use so as to protect the public from confusion. It must count on the self-interest of trademark owners to do that." [citations omitted].

As to the "unity of control" issue, the Board noted that "in some circumstances, where there is a relationship, but perhaps not the 'unity of control' envisioned by the Wella doctrine, a consent from a related company may suffice." See In re Sumitomo Electric Indus., Ltd., 184 USPQ 365 (TTAB 1974):

While this letter of consent does not constitute an agreement of the type involved in the Du Pont case, this does not mean that it is unacceptable herein. Each agreement submitted in support of registration must necessarily be judged for its particular value in light of the particular circumstances surrounding the relationship or arrangement between the parties thereto. In the instant case, the relationship between the parties, both members of the “Sumitomo Group” makes the letter of consent a viable one and one on which we can conclude that confusion is not reasonably likely to occur. That is, the parties undoubtedly work hand-in-hand to avoid confusion in trade which would be inimical to their best interests, and they are in a position to expeditiously correct any situation that could possibly give rise to confusion in the marketing of their respective goods.

Reviewing the consent agreement and the license submitted by Applicant, the Board found that they "outweigh the other du Pont factors." Registrant clearly consented (albeit in a "thin consent") to applicant's use and registration of WACKER NEUSON. Moreover, the parties are related and the goods and services under both marks are provided by Applicant. The license agreement acknowledges applicant's right to register and use the WACKER NEUSON mark, and an addendum recognizes "applicant's proprietary rights in the WACKER NEUSON trademark, inasmuch as it provides that applicant grants registrant a right to use the NEUSON mark in the event that applicant's 'industrial property rights in the WACKER NEUSON trademark' otherwise prevents such use."

Therefore, based on the "particular circumstances surrounding the relationship [and] arrangements between the parties," the Board concluded that confusion "is not reasonably likely to occur."

TTABlog comment: Although the facts of this case may be rather unique, the decision may come in handy when one wants to remind an examining attorney of the PTO's role in reviewing agreements between an applicant and a registrant.

Text Copyright John L. Welch 2011.