Thursday, March 31, 2011

TTABlog Quarterly Index: January - March 2011

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Section 2(d) - likelihood of confusion:

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

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

Section 2(e)(5) - Functionality:

Section 2(f) - Acquired Distinctiveness:


Failure to Function:

Fraud:

Non-use:
Genericness:

Ownership:

Procedural issues:

Request for Information (Rule 2.61(b)):

Res Judicata:

Use in Commerce/Drawing/Specimen of Use:

CAFC Decisions:



Recommended Reading:

Other:

Text ©John L. Welch 2011.

posted by John L. Welch @ 3/31/2011   0 comments

TTAB Deems FREEDEMOGRAPHICS.COM Generic for ... Guess What?

What would you expect to find at a website with the name FREEDEMOGRAPHICS.COM? Maybe demographic data available without cost? The Board applied both the In re Gould test for compound words and the American Fertility for phrases in concluding that this term is generic for "business and marketing services, namely, providing customizable demographic data, reports, and analysis." In re SRC, LLC, Serial No. 77282935 (March 16, 2011) [not precedential].


After a mere descriptiveness refusal, Applicant SRC amended its application to seek registration on the Supplemental Register, but Examining Attorney Michael Webster played the genericness card. He relied on dictionary definitions of "free" and "demographics," and urged that the TLD ".com" has no source-identifying significance. He also submitted several website pages and articles using the terms "free demographic" or "free demographics" in connection with online sources for such data.

Applicant argued that its website provides "an array of services extending far beyond the provision of statistical data that is available without monetary payment:"for example, it provides "interactive participation" and detailed reports. Applicant also submitted printouts from two website pages "referencing applicant's services when using the term FREEDEMOGRAPHICS.COM."

The Board found FREEDEMOGRAPHICS.COM to be a compound term properly analyzed under Gould. Since the individual components are generic for the offered services, and their combination lends "no additional meaning to the term," the term itself is generic.

The Board noted that the proposed mark includes three components and arguably bears a closer conceptual resemblance to a phrase than a compound word. However, the record included evidence of use of FREE DEMOGRAPHICS; and the TLD .com "in this case does not present an 'exceptional circumstance' and, as such, is wholly without source-identifying significance." Therefore the term is also generic under the American Fertility analysis.

The fact that Applicant's services are broader that just supplying data does not avoid genericness. "[A]s long as the term is generic of an aspect of the services, it must be refused registration. The evidence showed that "the provision of free demographics is a class of service and the term is used to refer to such services promoted by other websites."

Finally, the two website printouts provided by Applicant were not enough to create a "mixed record sufficient to rebut the PTO's prima facie case."

And so the Board affirmed the refusal.

TTABlog note: For more on the type of "mixed record" that will avoid a genericness refusal, see the recent THUMBDRIVE case, TTABlogged here.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/31/2011   2 comments

Wednesday, March 30, 2011

Webinar on "Trademark Bullying: Emerging Legal Threat" - April 6th, 1PM EST

Strafford Publications will host a Webinar on April 6th, 1:00 too 2:30 EST, on "Trademark Bullying: Emerging Legal Threat." The distinguished faculty comprises Stephen R. Baird, Theodore H. Davis, Jr., Leah Chan Grinvald, and Anne Gundelfinger. Details regarding the program may be found here.

ex-Bully?

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posted by John L. Welch @ 3/30/2011   0 comments

E.D. La. District Court Upholds TTAB's "ORCHID CREAM VANILLA" Snowball Decision

In the latest chapter of the snowball fight over SnoWizard's registration for the mark ORCHID CREAM VANILLA for "flavoring concentrate for non-nutritional purposes, namely, flavoring concentrate for shaved ice confections," the U.S. District Court for the Eastern District of Louisiana has upheld the TTAB's decision [TTABlogged here] finding the mark merely descriptive and cancelling the registration. Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc., Civil Action 16-9170 et al. (E.D. La.).


Snowizard appealed to the CAFC from the Board's decision, but Southern Snow invoked 15 U.S.C. Sec. 1071(b). However,the appellee has the right, within 20 days of the notice of appeal, to invoke 1071(b) to remove the appeal from the CAFC, requiring the appellant to file an action in the district court. [See TTABlog posting here].

Southern Snow moved for summary judgment on SnoWizard's Section 1071(b) review claim. SnoWizard contended that it was not required to produce new evidence, but could simply ask the court to review the TTAB decision.

... while SnoWizard is correct in that it need not produce new evidence in support of its § 1071 claim, it nonetheless must demonstrate to the Court that there remains some issue to be tried to the jury or at the very least it must point out the TTAB’s specific errors so as to enervate the otherwise persuasive weight that the mover hopes to garner on summary judgment from a favorable TTAB decision.

The court found the TTAB's decision to be "well-reasoned and the factual conclusions to be well-suppported."

The TTAB clearly explained the evidence upon which it relied, the legal standards it was using, and the findings are not conclusory or without explanation. See Am. Heritage, 494 F.2d at 10 n.4. Although the decision is surely not binding on this Court, the decision is nonetheless very persuasive and entitled to some weight. At the very least, the Court is persuaded that the TTAB decision as to ORCHID CREAM VANILLA is sufficient evidence for Plaintiffs to meet their initial burden on summary judgment thereby triggering Defendant’s obligation to create an issue of triable fact.

The court concluded, however, that the record "provides no basis upon which to conclude that snowball stand owners and operators would associate ORCHID CREAM VANILLA with SnoWizard a being the unique, single source of this flavor...."

And so the court ruled that the subject registration "was properly ordered cancelled."

TTABlog note: SnoWizard has not fared well lately at the TTAB. See:

  • WHITE CHOCOLATE & CHIPS, Serial No. 77471425, found merely descriptive of "food flavorings."

  • CAJUN RED HOT, Serial No. 77472649,found merely descriptive of "flavoring concentrate for nonnutritional purposes, namely, flavoring concentrate for shaved ice confections"

  • COOKIE DOUGH, Serial No. 77524268, found merely descriptive of "food flavorings."

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/30/2011   3 comments

Tuesday, March 29, 2011

CAFC Affirms TTAB's Dismissal of CITIBANK's Opposition to CAPITAL CITY BANK

The CAFC has affirmed the TTAB's decision in Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential] [TTABlogged here], ruling that the Board had properly applied the du Pont factors in dismissing Citibank's Section 2(d) opposition to registration of four standard character marks that include the phrase CAPITAL CITY BANK. Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) [precedential].


Citibank dropped its dilution claim on appeal, and instead focused on the two du Pont factors that the Board decided in CCB's favor: the dissimilarity of the marks and the lack of actual confusion.

Similarity of the marks: The appellate court ruled that substantial evidence supported the Board's factual finding that the CAPITAL CITY BANK marks and the mark CITIBANK are "dissimilar in appearance, sound, connotation, and commercial impression."

The court did, however, conclude that the Board erred in its view that only "reasonable" manners of depicting a standard character mark are to be considered.

Neither Phillips nor any other opinion of the United States Court of Customs and Patent Appeals, our predecessor court, or this court has endorsed the T.T.A.B.’s “reasonable manner” limitation of variations evaluated in the DuPont analysis.
* * *
The T.T.A.B.’s “reasonable manner” standard limits the range of marks considered in the DuPont analysis. * * * The T.T.A.B. should not first determine whether certain depictions are “reasonable” and then apply the DuPont analysis to only a subset of variations of a standard character mark. The T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark. As explained in Phillips, illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear.

Lack of actual confusion: Again, the court concluded that substantial evidence supported the Board's factual finding regarding lack of actual confusion. Citibank argued that the lack of actual confusion was not significant, since CCB "has not used all the potential variations of the standard character mark." The court was not persuaded: "Although the most potentially confusing form of CCB's marks, that is, a version deemphasizing 'Capital" and emphasizing "City Bank,' has not yet been used, the critical words are all in use and there is no evidence of actual confusion." However, the CAFC did state that the "actual confusion" factor has "limited probative value in this case."

Finally, the CAFC considered the Board's legal conclusion of no likelihood of confusion, and agreed with it.

And so the appellate court affirmed the TTAB's decision.

TTABlog comment: The court did not make it clear (at least to me) what the TTAB is supposed to do in considering the possible variations of a standard character mark. The Board cannot limit its consideration to "reasonable" alternatives. So must it consider "unreasonable" alternatives?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/29/2011   1 comments

Monday, March 28, 2011

TTAB Issues Pre-Trial Order in New REDSKINS Cancellation Battle

The TTAB has issued a nine-page pre-trial order (here) in Blackhorse v. Pro Football, Inc., Cancellation No. 92046185, the latest chapter in the battle over the REDSKINS trademark registrations. A brief review of the prior TTAB and federal court proceedings may be found here. In the Harjo case, the U.S. Court of Appeals for the District of Columbia Circuit ultimately (in 2009) affirmed the district court's ruling that the Section 2(a) disparagement claims of the Native American plaintiffs were barred by laches.


However, back in 2006, a "new" petition for cancellation was filed by six "new" Native American petitioners, including Amanda Blackhorse, seeking to knock out the same six REDSKINS registrations on the ground of disparagement. The petition alleges that "each of the Petitioners ... [has] only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run." [See TTABlog posting here].

Amanda Blackhorse

The parties have entered into a five-page stipulation of facts (here) wherein they agreed to the admissibility of certain evidence from the Harjo litigation. The Board's order sets forth "t]he applicable law as discussed in the Board’s previous decision in Harjo and the decisions by the District of Columbia District Court and District of Columbia Circuit Court of Appeals." Included in the Board's recitation of the law are these points:

6. To determine the referenced group, the Board will look to "the perceptions of ‘those referred to, identified or implicated in some recognizable manner by the involved mark.'"

7. The question of disparagement must be considered in relation to the goods or services identified by the mark in the context of the marketplace.

8. The test for disparagement comprises a two-step inquiry:
a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
b. Is the meaning of the marks one that may disparage Native Americans?

9. Both questions are to be answered as of the various dates of registration of the involved marks.

TTABlog comment: The six challenged registrations issued in 1990 or earlier. As I understand it, plaintiffs must demonstrate that a "substantial composite" of Native Americans back in the 1980s would have perceived that use of the term "Redskins" in connection with entertainment services disparaged Native Americans or brought them into contempt or disrepute. How would you go about trying to prove that?

By the way, if a mark that has been registered can later become generic, why can't a mark that is registered later become disparaging? Why is the analysis of disparagement limited to the date of registration?

Text Copyright John L. Welch 2009.

posted by John L. Welch @ 3/28/2011   2 comments

Friday, March 25, 2011

TTAB Comes to Boston: April 29th at Northeastern University School of Law

The Trademark Trial and Appeal Board (TTAB) will once again travel to Boston on Friday, April 29, 2011, to hear final arguments in a TTAB inter partes proceeding, as part of a Boston Patent Law Association (BPLA) program to be held at Northeastern University School of Law (NUSL). The hearing will be preceded by a presentation on trademark ownership issues by Pamela Chestek and a review of TTAB rules and ACR practice by TTAB Administrative Trademark Judge David Mermelstein. It will be followed by commentary and discussion from a panel of distinguished Boston/Cambridge lawyers. The program will run from about 1:00 PM to 4:30 PM, with a reception afterward. Further details and registration here.


SPEAKERS AND PANELISTS
(in alphabetical order)

Pamela Chestek - Red Hat, Inc.
Pamela is Senior IP Attorney for Red Hat, Inc., the leader in enterprise Linux and the most recognized open source brand in the world. Her primary focus is providing advice on trademark and marketing issues as they relate to all aspects of the company's business globally.

Julia Huston, Foley Hoag LLP.
Julia is Chair of the Trademark, Copyright and Unfair Competition Practice Group at Foley Hoag LLP. Her practice is focused on intellectual property litigation, counseling and strategy, including trademark matters before the TTAB and the courts.

David Mermelstein: Administrative Trademark Judge
Appointed to TTAB in 2006: Prior professional experience: TTAB Interlocutory Attorney; TTAB Supervisory Attorney; Trademark Examining Attorney; Education: B.A. New College, Hofstra University; J.D. American University, Washington College of Law.

Susan Barbieri Montgomery, Northeastern University School of Law.
Susan Montgomery is a member of the faculties of the School of Law and College of Business Administration at Northeastern University. This Spring term she is teaching "International IP Law" in the JD program, "IP Business Law & Ethics" in the EMBA program and the interdisciplinary "Innovations Workshop." She continues to advise on IP and transactions matters in the Boston office of Foley Hoag LLP, where she has practiced for 25 years.

Larry Robins, Finnegan Henderson.
Larry is a partner focusing on strategic trademark and copyright counseling and trademark and copyright litigation, including TTAB proceedings. He is a frequent speaker on trademark and copyright matters and has published frequently on both topics.

Mark D. Robins - Nixon Peabody LLP.
Mark is a partner focusing on intellectual property litigation, including trademark matters before the TTAB and the courts. He has published extensively and spoken frequently on trademark and other intellectual property subjects and is co-chair of the BPLA Trademarks and Unfair Competition Committee.

John L. Welch - Lando & Anastasi, LLP.
John L. is Of Counsel to the firm, and practices intellectual property law in all its forms. A frequent author and lecturer on TTAB topics, he is the founder and publisher of The TTABlog, a contributing editor to Allen’s Trademark Digest, and a Member of the Editorial Board of The Trademark Reporter. He is co-chair of the BPLA Trademarks and Unfair Competition Committee.

posted by John L. Welch @ 3/25/2011   0 comments

Thursday, March 24, 2011

Florida Bar IP Symposium: April 14-15 in Fort Lauderdale

The Florida Bar Continuing Legal Education Committee and the Business Law Section will present their 2nd Annual Intellectual Property Symposium on April 14 and 15, 2011, in Fort Lauderdale, Florida. Details here.


This is an "advanced CLE program presented by leading practitioners, academics, in-house attorneys and representatives of the PTO and Copyright Office. This review of intellectual property will include a look at the story behind the $21 Million Verdict in Powell vs. Home Depot, the Gene Patent Controversy, Licensing and Endorsements in Sports (and Entertainment), Intellectual Property Protection vs. The First Amendment and Bankruptcy."
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posted by John L. Welch @ 3/24/2011   0 comments

Test Your TTAB Judge-Ability: Must OUTFITTERS Be Disclaimed for Retail Cosmetics and Jewelry Services?

Applicant Retail Royalty refused to bow down to the PTO's demand that it disclaim the word OUTFITTERS in its application to register the marks AMERICAN EAGLE OUTFITTERS and the design mark shown below, for retail store services in the field of fragrances, cosmetics, personal care products, and jewelry. Applicant had previously disclaimed OUTFITTERS in several of its registration, including registrations for soap, perfume, and jewelry. In re Retail Royalty Company, Serial Nos. 77791067 and 77979784 (March 9, 2011) [not precedential].


The numerous proffered dictionary definitions were consistent in defining "outfitter" as "a shop that provides equipment for a specific purpose." The term is disclaimed in numerous third-party registrations, mostly for clothing and footwear, but not disclaimed in several others for those goods. Applicant did not contest that "outfitter" is descriptive for a retailer that deals in clothing, equipment, supplies and services for camping and outdoor activities.

The Board concluded that OUTFITTERS, as applied to the goods at issue, "is just suggestive." It rejected the PTO's feeble argument that "soap and sunscreen are personal care products that have definite utility in supplies for outdoor activities and camping," and that "watches are a kind of jewelry useful in many types of activities like camping."

The Examining Attorney further argued that "applicant does not operate different retail stores, some of which operate as an outfitter of clothing and outdoor goods and some of which feature, fragrances, cosmetics, personal care products, and jewelry." The Board was unmoved: "Be that as it may, mere descriptiveness is determined on the basis of the specific identification of goods and/or services set forth in an application."

The Board also pooh-poohed Applicant's earlier disclaimers because "[t]rademark rights are not static, that is, such rights do not remain constant over time." The perception of "outfitters" has varied over time, and the dictionary definitions of record demonstrates that the term is only suggestive here. Moreover, each case must be decided on its own facts and the Board is not bound by prior actions of examining attorneys. Applicant's prior disclaimers are "merely illustrative of shade and tone in the total picture confronting the decision maker."

And so the Board reversed the refusals to register.

TTABlog comment: Well, what do you think? Is American Eagle an "outfitter" or not? Just how much can it do to stop other outfitters from using the term?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/24/2011   0 comments

Wednesday, March 23, 2011

Recommended Reading: Theodore C. Max, "Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks"

The 100th Anniversary issue of The Trademark Reporter, includes Theodore C. Max's article entitled: "Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks," 101 TMR 282 (January-February 2011). [pdf here].


Mr. Max writes: "While to a certain extent virtual reality is a function of different types of intellectual property working together on many different levels, this article will focus on intellectual property implications in the virtual world from a content standpoint and will examine how intellectual property laws in the United States have been applied and might apply to the nteresting and complex issues raised by trademarks in virtual reality."

posted by John L. Welch @ 3/23/2011   0 comments

The Trademark Office Comes to California: April 11 (LA) and April 13 (SF)

The State Bar of California will host two one-day seminars on trademark law on April 11 (Los Angeles) and April 13 (San Francisco), entitled "The Trademark Office Comes to California." Details and registration information here. Speakers will include Administrative Trademark Law Judges Lorelei Ritchie and Frances Wolfson, Commissioner for Trademarks Deborah Cohn, and Sharon Marsh, Deputy Commissioner for Trademark Policy. Non-PTO speakers include a half-dozen prominent California practitioners, and one right-coaster, namely, yours truly.


I am greatly looking forward to meeting my California-based readers -- both of them. I will, as usual, focus on TTAB topics, with just a smidgeon of non-TTAB material.
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posted by John L. Welch @ 3/23/2011   1 comments

Tuesday, March 22, 2011

TTAB Sustains 2(d) Opposition to LIFE FOR THE LIVING over LIFE INSURANCE FOR LIVING, Rejects Genericness and Abandonment Counterclaims

In a 43-page decision, the Board sustained a Section 2(d) opposition to registration of the mark LIFE FOR THE LIVING for "insurance agency services in the field of life insurance," finding it likely to cause confusion with the registered mark LIFE INSURANCE FOR LIVING for "universal life insurance underwriting that prepays the death benefit for long-term care." The Board found no evidence supporting Applicant LifeVentures Corp.'s affirmative defense of genericness, and Applicant's abandonment defense likewise kicked the TTABucket. Lincoln National Life Insurance Company v. LifeVentures Corp., Opposition No. 91179205 (March 14, 2011) [not precedential].


Evidentiary issues: The Board first dealt with several procedural/evidentiary issues. It chastised the parties for their over-designation of material as confidential, and decided to treat as confidential "only testimony and evidence that we find to be truly confidential and commercially sensitive." It then dealt with a number of objections to Applicant's Notice of Reliance, overruling various objections to Internet webpages and official publications, and sustaining objections to several documents that did not meet the Safer requirements [Internet documents are admissible via notice of reliance if they include a date and URL].

Genericness: Judge Bergsman, in trademark fashion, systematically plowed through Applicant's proofs of genericness, concluding that "[t]here is simply no evidence demonstrating that the term LIFE INSURANCE FOR THE LIVING is perceived as a generic term for life insurance underwriting services."

Based on the evidence before us, we find that the term LIFE INSURANCE FOR LIVING is suggestive when used in connection with “universal life insurance underwriting that prepays the death benefit for long-term care” because the mark is incongruous and, therefore, it takes a multiple-step reasoning process to make the connection between the services and the mark. The mark LIFE INSURANCE FOR LIVING is incongruous because life insurance is not for living; it provides a death benefit for the insured’s survivors. As demonstrated by opposer’s use of the mark, applicant’s use of its mark, and the third party use of the mark, or similar terms, LIFE INSURANCE FOR LIVING suggests that a life insurance policy may do more than just pay a death benefit; it may have benefits during the owner’s life, hence, LIFE INSURANCE FOR LIVING.

Abandonment: Applicant contended that Opposer had abandoned its mark because the use of the mark "is so limited that it does not function as a trademark and ... its limited use is not consistent with the ordinary course of trade." The Board did not buy it.

The problem with applicant’s argument is that it is based on the mistaken premise that the bona fide commercial use of a mark is based on the effectiveness of opposer’s use, on some unspecified minimum quantity of use, or on a comparison with how opposer uses other marks or advertising materials. As indicated above, we must determine whether opposer’s use of its mark is a legitimate commercial use in the ordinary course of business. There is nothing in applicant’s evidentiary showing that persuades us that opposer’s use of LIFE INSURANCE FOR LIVING in the Client Program Guide is anything other than a legitimate commercial use. There is no minimum quantity of use so long as the use is legitimate commercial use.

The Board concluded that "applicant has failed to prove that there has ... been any [nonuse] of the mark by opposer, let alone nonuse of the mark for three consecutive years."

Likelihood of confusion: Opposer contended that its mark is famous based on sales and advertising figures and use since 1997. However, the Board noted that the mark has always been used as a "secondary mark" in connection with Opposer's "MoneyGuard" service mark. That was the death knell for the fame argument.

As to the marks, the Board found them to be similar in appearance, sound, meaning and commercial impression: they share the same structure and both "suggest life insurance policies providing living benefits."

As to the services, the Board concluded that "the conditions and activities surrounding marketing of life insurance agency services and underwriting universal life insurance policies are such that they would be or could be encountered by the same persons under circumstances that could ... give rise to the mistaken belief that they originate from or are in some way associated with the same source."

Finally, although purchasers of the services "are likely to be well-to-do and will exercise a high degree of care," the Board observed once again that "even sophisticated consumers are not immune to trademark confusion especially, where as here, the marks are similar and the services are related."

And so the Board sustained the opposition.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/22/2011   0 comments

Monday, March 21, 2011

Duets Blog: View Free Webinar on "Strategies for Dealing With Trademark Bullies"

Steve Baird of DuetsBlog recently moderated a seminar "Trademark Bullies." MinnCLE has now made available the webacast of the seminar for free viewing: here.
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posted by John L. Welch @ 3/21/2011   0 comments

Precedential No. 8: Applying Claim Preclusion, TTAB Dismisses Two of Three "DVD & Design" Cancellation Petitions

Respondent DVD FLLC moved for summary judgment on the ground of res judicata (claim preclusion) in these three consolidated cancellation proceedings involving registrations for the mark DVD & Design shown below [DVD disclaimed] for optical disks, readers, and related devices. Respondent contended that Petitioner Zoba’s fraud and abandonment claims were virtually identical to counterclaims that were previously dismissed with prejudice by stipulation and order in a prior civil action between the parties. The Board granted the motion as to two of the three proceedings. Zoba International Corp. v. DVD Format/LOGO Licensing Corporation, 98 USPQ2d 1106 (TTAB 2011) [precedential].


The Board observed that "[a] subsequent claim will be barred by claim preclusion if: '(1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first.'"

The Board first ruled that the CAFC's decision regarding "defendant preclusion" in Nasalok Coating Corp. v. Nylok Corp., 86 USPQ2d 1369 (Fed. Cir. 2008) [TTABlogged here] does not apply to two of the subject cancellations because Zoba was a counterclaim plaintiff, not a defendant, in the prior civil action. As to the third cancellation proceeding, the involved registration was not the subject of the civil action, and so Zoba had no obligation to assert a defense of trademark invalidity regarding that registration.

As to the summary judgment motion, there was no dispute that the parties here are identical to those in the civil action. Likewise, there was no "genuine" dispute that the stipulated order in the civil action was a final judgment.

As to the third factor for claim preclusion -- namely, whether the claims in the later proceeding are based on the same set of transactional facts as those asserted in a prior action -- the Board "must consider whether Zoba’s counterclaims comprise the same 'core [or nucleus] of operative facts' or are 'based on the same, or nearly the same, factual allegations' as those asserted in these proceedings."

The fraud claims raised by Zoba relied on the same allegedly false affidavits and specimens of use filed by DVD FLLC in renewing two of its registrations, and so the Board concluded that the third factor had been satisfied as to these claims.

Likewise, the third factor was satisfied as to Zoba's abandonment claims, which were "based on the same set of transactional facts which gave rise to Zoba’s counterclaims asserted in the civil action, namely, that DVD FLLC does not itself use the DVD LOGO in U.S. Reg. Nos. 2295726 and 2318677 as a trademark for its own goods; that the DVD LOGO is used by third parties; and that the DVD LOGO no longer identifies a single source for the goods with which the mark is used." Although the terminology used in the cancellation petitions and in the civil action counterclaims were different, that "does not raise a genuine dispute as to whether the counterclaim and the instant claims are based on the same set of transactional facts."

And so the Board granted the motion for summary judgment as to the first two cancellation proceedings.

As to the third proceeding, the involved registration "was not pleaded by DVD FLLC in the prior civil action and Zoba’s counterclaims therein did not seek to cancel that particular registration." And although the mark is the same as in the other two registrations, the goods are different and broader. There was no dispute "that the fraud and non-use counterclaims in the prior civil action and the fraud and abandonment claims in Cancellation No. 92051821 are not based on the same set of transactional facts."

Moreover, because the third registration was not pleaded in the civil action, the complaint "did not provide Zoba with notice that it had a right or need to assert a defense against U.S. Reg. No. 2711602." "In view of the foregoing, both precedent and fairness
dictate our finding that Zoba’s fraud and abandonment claims in Cancellation No. 92051821 are not barred by the doctrine of claim preclusion."

And so the Board dismissed the first two proceedings, with the third proceeding surviving.

TTABlog note: If you want to know more about the DVD logo and the DVD format, go here and here.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/21/2011   0 comments

Friday, March 18, 2011

WYHA? ALLENS NATURALLY Refused Registration over ALEN AMERICAS for Cleaning Preparations

This applicant sought registration of the mark ALLENS NATURALLY for, inter alia, all-purpose cleaners, but Examining Attorney Sara N. Benjamin refused registration under Section 2(d) in view of six registrations for marks including the word ALEN for various cleaning preparations. The Board focused on the cited registration for ALEN AMERICAS for "all purpose liquid cleaning preparations" [AMERICAS disclaimed]. Would you have appealed? In re Almar Enterprises Ltd., Serial No. 77650559 (February 25, 2011) [not precedential].


The Board found the goods to be, in part, identical, and the channels of trade to be the same. These factors weighed heavily in favor of a finding of likely confusion.

The Board deemed ALEN to be the dominant portion of the registered mark, and ALLENS to be dominant in Applicant's mark.

As applicant points out, the term NATURALLY serves a double meaning of either suggesting the “greenness” of its products (appl’s brief at 14) or of emphasizing the brand -- ALLENS “of course.” Id. In either case, while we view applicant’s mark in its entirety, we find that the term “ALLENS” is emphasized, and creates the dominant commercial impression.

The extra "L" in the applied-for mark is likely to be overlooked by customers, who may believe that Applicant's goods are an extension of those of registrant, "perhaps either in a more 'green' line 'NATURALLY' or emphasizing that consumers should once again choose that brand 'of course.'"

Applicant argued that the word ALEN or ALLENS is a weak formative in light of 722 records in the USPTO database for mark containing one of the words. However, the marks were not for cleaning preparations and, in any case, Applicant did not submit copies of the registrations, as required.

Finally, Applicant pointed to the lack of actual confusion, but of course that carries little weight, "especially in an ex parte context."

And so the Board affirmed the refusal.

TTABlog comment: Here, the double entendre in Applicant's mark didn't help. Compare that to yesterday's RAISED RIGHT beef case, where the double entendre was ignored by the Board.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/18/2011   0 comments

Thursday, March 17, 2011

Test Your TTAB Judge-Ability: Do You Have a Beef with This Section 2(d) Decision?

Applicant Ridgefield Farm sought to register the logo mark shown below, for beef [BEEF and REAL BEEF disclaimed]. The Examining Attorney refused registration in light of the registered mark RAISED RIGHT for "poultry, meat and game." Of course, the goods are considered legally identical, and the Board then presumed that they travel in the same, normal channels of trade to the same classes of consumers. But what about the marks? Are they confusingly similar? Remember that when the goods are identical, a lesser degree of similarity is necessary to support a finding of likely confusion. In re Ridgefield Farm LLC, Serial No. 77758560 (February 25, 2011) [not precedential]


The Board pointed out that the test is not whether the marks can be distinguished in a side-by-side comparison. "The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks." It concluded that, on balance, the similarities outweighed the differences:

Registrant's mark “RAISED RIGHT” is incorporated in full in applicant’s mark. The phrase, “REAL BEEF • RAISED RIGHT • AROUND HERE” in sight and sound is several syllables/words longer than the mark in the cited registration. However, the term “RAISED RIGHT,” set off by raised dots, is a visually significant part of applicant's mark and it creates an impression apart from the other wording. Furthermore, the term “RAISED RIGHT” is significant in creating the commercial impression of applicant's mark as a whole. It is displayed prominently in the top portion of applicant's mark directly above the image of a cow, and it gives the same connotation and commercial impression as registrant's mark, both suggesting beef (or meat) from cattle that have been raised in the right manner.

Finally, the Board noted that the involved goods are "staple, relatively inexpensive items that may be subject to impulse purchases."

And so the Board affirmed the refusal

TTABlog comment: So what do you think? Do you agree that RAISED RIGHT creates a separate commercial impression? Doesn't it go with AROUND HERE, to create a double entendre? RAISED RIGHT and RAISED RIGHT AROUND HERE?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/17/2011   6 comments

Wednesday, March 16, 2011

Recommended Reading: Andrew Beckerman-Rodau, "The Problem With Intellectual Property Rights: Subject Matter Expansion"

The Yale Journal of Law and Technology has published a new article by Professor Andrew Beckerman-Rodau of Suffolk University Law School, entitled "The Problem With Intellectual Property Rights: Subject Matter Expansion," 13 YALE J.L. & TECH. 35 (2010-2011 Fall Issue). [pdf here]. Andy is professor of law and co-director of the Intellectual Property Law Concentration at Suffolk University Law School in Boston. The abstract is reproduced below.


This article examines the expansion of the subject matter that can be protected under intellectual property law. Intellectual property law has developed legal rules that carefully balance competing interests. The goal has long been to provide enough legal protection to maximize incentives to engage in creative and innovative activities while also providing rules and doctrines that minimize the effect on the commercial marketplace and minimize interference with the free flow of ideas generally. The expansive view of subject matter protectable via intellectual property law has erased the clear delineation between patent, copyright, and trademark law. This has led to overprotection of intellectual property in the form of overlaps which allow multiple bodies of intellectual property law to simultaneously protect the same subject matter. Such overlapping protection is problematic because it interferes with the carefully developed doctrines that have evolved over time to balance the private property rights in intellectual creations against public access to such creations. This article will examine the competing policies that underlie the various branches of intellectual property law. It will then discuss the expanding domain of subject matter protected by patent, copyright, and trademark law. Finally, it will examine the overlaps that exist under patent, copyright, and trademark law and the resulting problems with regard to software, clothing, computer icons, graphical computer interfaces, music, and useful commercial products.



I remain puzzled why the TTAB and the courts will deny trademark protection to a product shape on the ground of utilitarian functionality when the shape falls within the claims of a utility patent, but will not deny trademark protection to a shape that falls with the claim of a design patent. Wouldn't the rationale be the same -- an improper extension of the patent monopoly right? Others more cerebral than I have written on this question, and several TTABlog postings have focused on articles on this very topic: see here and here.

The Board and the courts will on occasion apply the doctrine of "aesthetic functionality" to deny trademark protection, but what that boils down to is that the design fails to function as a trademark: i.e., acquired distinctiveness has not been shown. But no case that I know of holds that trademark protection is barred because of the existence of a design patent.

Text Copyright John L. Welch.

posted by John L. Welch @ 3/16/2011   0 comments

Tuesday, March 15, 2011

TTAB Decides Priority Dispute in ZORLAC Skateboard Clash

IP Ownership guru Pamela Chestek reports here at her Property, Intangible blog on the TTAB's decision in Newton v. Brown, Opposition No. 91174441 (February 7, 2011) [not precedential]. The case boiled down to a priority dispute over the mark ZORLAC for skateboards and apparel. Says Pamela, "This case just stinks. I can't say it's wrongly decided, it just seems so unfair."


Pamela summarizes: "Newton opposed Brown's application and the only question was priority. If Brown had abandoned the mark then Newton had priority, since his actual use preceded the intent-to-use application filing date. If the mark was not abandoned then Brown owned it, based on Newton's transfer to him of the mark and its continuous use thereafter. There is little documentary evidence in the case; instead, the Board had to rely on conflicting testimony of adverse parties and biased witnesses to reach its conclusion."

Before reaching its decision on priority, the Board dealt with several evidentiary objections. It ruled that its decision in Safer, Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010) [TTABlogged here], which changed Board practice by allowing Internet webpages to be submitted into evidence via a notice of reliance, applies retroactively to cases already pending when the decision came down. It also overruled Applicant’s objection that he could not locate a certain webpage because the objection was first raised in his final brief, well after the time when opposer could have offered evidence in response to the objection. The Board observed that "[i]t would be easy for a defendant to dispose of unfavorable Internet evidence by alleging in its final filing that it could not locate a webpage."

Text Copyright John L. Welch.

posted by John L. Welch @ 3/15/2011   1 comments

Monday, March 14, 2011

TTAB Dismisses HOT POCKETS 2(d) Opposition Due to Weakness of POCKETS Formative

The Board dismissed this Section 2(d) opposition to registration of PF POCKET FOODS CORPORATION & Design for pocket sandwiches [POCKET FOODS CORPORATION disclaimed], finding it not likely to cause confusion with with the marks HOT POCKETS and LEAN POCKETS for frozen stuffed sandwiches. The Board observed that "the one point of similarity, at a minimum, is highly suggestive of the goods such that the marks are not confusingly similar." Nestle Prepared Foods Company v.V&V Enterprises Incorporated, Opposition No. 91167465 (March 10, 2011) [not precedential].


Applicant filed its brief five days late, mistakenly relying on the five-extra-days-mail-service rule (2.119(c)), which does not apply when the due date is set by Board order. Nonetheless, the Board accepted the brief, finding no bad faith and no evidence of prejudice to Nestle from the delay.

Nestle attempted to rely on three third-party registrations for marks containing the word POCKETS, but those registrations were owned by its parent and so Nestle could not benefit from the Section 7(b) presumptions attaching to those registrations. So Nestle had to rely on its common law usage of HOT POCKETS and LEAN POCKETS.

Applicant argued that HOT POCKETS is merely descriptive, but the results of a brand awareness survey (96%) convinced the Board that the mark had acquired distinctiveness before Applicant's filing date.

As to the goods, the Board found them to be overlapping, and it therefore presumed that they travel in the same channels of trade to the same class of consumers. The goods are relatively inexpensive and "are subject to a lower level of purchaser care."


The Board then turned to the "main question" in the case: "whether opposer's mark HOT POCKETS is sufficiently similar to applicant's mark such that when used on nearly identical goods, there is likely confusion."

Central to the analysis in this case is the impact of the common term "pocket" to a potential consumer and whether use of that word is enough to create a likelihood of confusion.

The Board found that HOT POCKETS has "strong commercial strength," but the evidence fell short of proving the mark famous for purposes of the Section 2(d) analysis. There was no evidence of long term use of the mark, and Nestle did not separate its sales figures by brand: HOT POCKETS, LEAN POCKETS, or CROISSANT POCKETS.

Moreover, the record showed that "pocket" is "at a minimum, highly suggestive" when used in connection with stuffed sandwiches or snacks. Applicant submitted a number of third-party registrations that include "pocket" or "pockets" in the mark, with the term disclaimed or the registration residing on the Supplemental Register, as well as registrations with the terms used in the identification of goods.

In view of the weakness of the common term POCKET in connection with frozen stuffed sandwiches, the substantial dissimilarities in sound, appearance, connotation and overall commercial impressions of the marks outweigh the differences. [sic!]

And so the Board dismissed the opposition.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/14/2011   2 comments

Friday, March 11, 2011

TTAB Affirms Refusal of BENCH VAC for Vacuum Cleaners Due to Applicant's Failure to Comply with Request for Information

In this oddball case, the Board affirmed a refusal to register the mark BENCH VAC for "vacuum cleaners" because Applicant failed to comply with a Rule 2.61(b) requirement that it provide information about the goods. However, the Board reversed a Section 2(e)(1) mere descriptiveness refusal because the Examining Attorney's evidence (two dictionary definitions) was insufficient. In re Shop Vac Corporation, Serial No. 77542156 (February 28, 2011) [not precedential].


Mere descriptiveness: The Examining Attorney contended that because Applicant did not respond to his request for information, "it is reasonable to infer" that the goods comprise vacuum cleaners for use in connection with a worktable or bench.

Not so fast, said the Board. It is inappropriate for an Examining Attorney to speculate about the goods in an ITU application. Applicant stated that its goods might be used on a bench, but it argued that "the place where a product might be used is not an important enough concern in the purchasing decision to warrant a descriptiveness rejection."

The Board sided with the Applicant because there was no evidence that BENCH would be understood by relevant consumers to describe a significant aspect of Applicant's goods.

Request for Information: Applicant failed to respond to the information request until its reply brief, where it stated merely that it has no marketing materials. Applicant did not explain its failure to provide information, but essentially argued that the question should be deferred until a statement of use is submitted. The Board said not so fast.

If applicant truly has no information about the exact nature of its vacuum cleaner because, for example, it is still in the design stage, applicant should have so stated. On the one hand, applicant’s goods are identified as "vacuum cleaners," which encompasses all types of vacuum cleaners for all types of uses. However, information about whether applicant’s vacuum cleaners are intended or designed for use in a workshop environment and/or on or in connection with a workbench is quite relevant to the question of descriptiveness.

And so the Board affirmed the Rule 2.61(b) refusal but reversed the Section 2(e)(1) refusal.

TTABlog comment: Now why would Applicant want to call its product BENCH VAC? Why did it choose the word BENCH? Maybe in honor of a certain Hall of Fame baseball catcher?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/11/2011   2 comments

Thursday, March 10, 2011

TTAB Dismisses CAKE DIVAS Opposition as Applicant Proves Priority Via Analogous Trademark Use

Opposer lost this TTAB 2(d) food fight when it lost the priority battle. It claimed that Applicant's mark CAKEDIVA for "greeting cards featuring photographs of cakes and cookies" and for "cakes ... and edible decorations made of sugar for cakes and cookies," would likely cause confusion with the mark CAKE DIVAS for "custom cake making, baking, designing and decorating services for edible and faux cakes"]. The Board also threw out Opposer's fraud claim because Opposer never pleaded fraud and raised the issue for the first time in its final brief. Cake Divas v. Charmaine V. Jones, Opposition No. 91173301 (February 23, 2010) [not precedential].


Evidence: The Board first dealt with several evidentiary issues, sustaining Opposer's objection to Applicant's testimony describing her website under the best evidence rule (FRE Section 1002), but it denied Opposer's similar objection to testimony about Applicant's business card because Opposer itself elicited the testimony on cross-examination.

Priority: The only issued litigated by the parties was priority. Opposer established a first use date of October 15, 1998. Determining Applicant's first use date, however, was "more complex" because Applicant did not provide evidence of any technical trademark use prior to October 15, 1998. Instead she had to rely on use analogous to trademark use.

Opposer argued that analogous use may be relied upon for priority only by an opposer seeking to prevent someone from registering a mark, but the case law indicated otherwise. The Board pointed out that, while technical trademark use is required to support an application to register, a party may prove priority through use analogous to trademark use. In other words, analogous use may be tacked onto technical trademark use to prove priority. [Query: may analogous use be tacked on to the constructive first use date of an intent-to-use application? ed.]

Applicant provided magazine articles and advertisements dating back to 1993, a website link in 1996, and evidence of a television appearance in 1993. The Board found that enough to establish use "in a manner analogous to trademark and service mark use as of 1993."

Applicant made bona fide commercial use of the mark through her advertising. Her use of the mark CAKE DIVA created a public identification for her mark and her goods as demonstrated by Ashbell McElveen displaying the cornucopia cake on the 1993 Thanksgiving show for the Sunday Morning Weekend Today Show and this public identification continued with the news articles referencing the Cake Diva in the Gary Info, Wedding Dresses Magazine, Sugarcraft Magazine, and Black Diaprosa [sic!] Magazine.

Although Applicant's early use was in the two-word form CAKE DIVA, the Board found that term to be legally equivalent to the applied-for mark CAKEDIVA. [That was the icing on the cake - ed.]

And so the Board dismissed the opposition.

TTABlog comment: Use analogous to trademark use is certainly a loosey-goosey concept. How much is enough? When has a "public identification" been established? After one appearance on the Today show?

For a precedential ruling on "analogous" use, based on rather flimsy evidence, see the Stickley decision TTABlogged here.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/10/2011   2 comments

Wednesday, March 09, 2011

Use of Mark "BLUE TURF" on Blog Suffices as Service Mark Specimen for Sports Entertainment Services, Says TTAB, Unconvincingly

As an amateur blogger, maybe I should "like" this decision, but I don't. The Board reversed a refusal to register the word mark BLUE TURF for "entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions," finding the blog page shown immediately to be an acceptable specimen of use for the mark. In re Boise State University, Serial No. 77574816 (February 18, 2011) [not precedential].

(click on picture for larger image)

The Examining Attorney did not dispute that the appearance of the term BLUE TURF BLOG was a technical use of the mark BLUE TURF. According to the Board, "[t]he generic term BLOG is not essential to the commercial impression conveyed by the term BLUE TURF." [I don't agree. I don't think one should ignore the word BLOG. Why would an ordinary "consumer" think that this was a use of the mark BLUE TURF? Isn't it a use of the mark BLUE TURF BLOG for informational services? - ed.]

The Examining Attorney did, however, maintain that there is "no direct association between the football team and the words BLUE TURF, arguing that BLUE TURF as used on this specimen only identifies a 'blog' or online journal, a service that is totally different from the service of presenting intercollegiate sporting events." [I agree: BLUE TURF BLOG refers to a blog, not a football team - ed.] The Board disagreed:

The purpose of applicant's blog, at least as it appears on these specimens, is to provide continuing updates on game day preparations and to report on pre-game highlights and activities. The blog is produced on the University's website, it is maintained and hosted by the University, and moreover, it is authored by the University "staff." Although the "blog" is not an advertisement in the traditional sense, it nonetheless is clearly used by the University as a marketing device, that is, as a means to generate interest in and to promote and market upcoming sporting events conducted by the University. We find that the specimen shows use of applicant's mark to identify the services specified in the application.

And so the Board reversed the refusal.

TTABlog comment: An ugly decision, and an uglier football field.


Text Copyright John L. Welch 2011.

posted by John L. Welch @ 3/09/2011   2 comments

Tuesday, March 08, 2011

WYHA? TTAB finds NAPA FOODS Primarily Geographically Deceptively Misdescriptive for Food

A United Kingdom company called Napa Valley Foods, Inc., sought to register the mark NAPA FOODS (in standard character and design form) for various food items, relying on Section 44(e) and four Nigerian registrations. Examining Attorney Amy E. Hella refused registration under Section 2(e)(3) of the Act. The Board affirmed. Would you have appealed? In re Napa Valley Foods Inc., Serial Nos. 77627932, 77627933, 77627934 and 77627935 (February 22, 2011) [not precedential].


Applicant did not dispute the geographic descriptiveness of "Napa Valley," but asserted that "Napa" is not the same thing:

Applicant relies on definitions of “napa” as meaning “a very soft glove leather made from the skin of a sheep, kid or goat” and “Chinese cabbage.” Applicant also points out that NAPA is an acronym for National Academy of Public Administration and National Association of Performing Artists, and that Google searches for Napa retrieve references to an auto care chain, the National Academy of Public Administration, National Asphalt Pavement Association, National Association for the Practice of Anthropology and software systems. [What the heck is the National Association for the Practice of Anthropology and software systems? - ed/]

Applicant further stated that it chose NAPA because it is "easy to pronounce in many languages." [So is "baloney" - ed.]

The Board said "baloney." Applicant's argument regarding ease of pronunciation was "disingenuous" in view of its corporate name. Moreover, when used in connection with the identified good items, NAPA would not be given the other meanings that Applicant offered.

The Examining Attorney's evidence regarding the fame of the Napa Valley for food and wine persuaded the Board that consumers would understand NAPA to refer to the geographic location, Napa Valley, California. Thus the first prong of the 2(e)(3) test was met: the mark's primary significance is a generally known geographic location.


As to the second prong, there was no dispute that Applicant's goods do not come from the Napa Valley. As to the requisite goods/place association, Applicant argued that the Examining Attorney did not show that the Napa Valley is well known for the specific goods in the applications. However, the Board found that an association had been shown between Napa and at least some of the goods in each application: canned fruits, olive oil, seasonings, salad dressings, and spices. Moreover, even more generally:

Because applicant’s food items are related to the restaurant services for which Napa Valley is famous and are related to the food items sold in Napa, consumers are likely to believe that the source of the goods identified in applicant’s applications is Napa Valley.

Therefore, the Board found a goods/place association between the goods and the place named in the mark.

Thirdly, a Section 2(e)(3) refusal requires that the misrepresentation is a material factor in the consumer's decision. The Board ruled that the Examining Attorney had met this burden.

The record is replete with references to Napa being a food mecca, and we have already quoted many of the articles and websites in this opinion. A finding that a geographic place is noted for or renowned for goods supports a finding of materiality. There is no question that Napa is famous for food, and because of this renown, consumers are likely to buy food bearing the NAPA mark because they think that the goods come from Napa Valley.

And so the Board affirmed the refusals to register.

TTABlog note: I don't think there was any way this application would survive an appeal, do you?

Text Copyright John L. Welch.

posted by John L. Welch @ 3/08/2011   1 comments