Thursday, January 27, 2011

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.


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