TTAB Affirms 2(e)(2) Refusal of EAST COAST for Vehicle Towing Services

Finding the mark EAST COAST to be primarily geographically descriptive of Applicant's "vehicle towing services", the Board affirmed a Section 2(e)(2) refusal to register the mark. In re East Coast Towing & Storage, LLC, Serial No. 76696173 (March 28, 2011)[not precedential].


Examining Attorney Kelley L. Wells relied on dictionary definitions and website pages in contending that "East Coast" means the eastern most part of the USA, and is used to describe the states running along the Atlantic Ocean. Applicant's business is located in Falls Church, Virginia, a suburb of Washington, D.C.

Applicant argued that EAST COAST is not a known, identifiable geographic location:

it could be the eastern portion of any country bounded by waters, the east coast of Puerto Rico or any of the islands of Hawaii …. Simply because a state has a border on the Atlantic Ocean it does not make the services performed in that state the east coast. A person located in the western part of Virginia would never refer to that locality as the "east coast."

The Board found that EAST COAST conveys a readily recognizable geographic significance. "That it is a regional location does not detract from its geographic significance. *** The primary significance of EAST COAST is a geographic place which is not obscure or remote but, rather, is generally known to the public."

"The fact that EAST COAST may identify more than one geographic location does not necessary detract from the term's primary geographic significance." Although some of the definitions of record indicate that "East Coast" often refers to the urban corridor from Washington, D.C. to Boston, this is immaterial because Applicant is located in that corridor.

Because Applicant's services originate in the area named in the mark, the Board "can presume an association of applicant's mark with towing services." Relevant consumers are likely to believe that Applicant's mark indicates the place where its services originate.

The Board therefore concluded that the mark is primarily geographically descriptive of Applicant's services, and it affirmed the refusal.

TTABlog comment: What if the mark were "RIGHT COAST?" Is that a well-known geographic description?

Text Copyright John L. Welch 2011.

USPTO Issues Trademark Bully Study

The USPTO has issued its Report to Congress on "Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting." (pdf here: http://www.uspto.gov/trademarks/notices/TrademarkLitigationStudy.pdf). Enjoy!

TTAB Reverses 2(d) Refusal of "S9" Over Stylized ".9S" Mark for Computer Goods

The Board reversed a Section 2(d) refusal to register the mark S9 in standard character form, for network access gateways, finding it not likely to cause confusion with the mark shown immediately below, for "computer systems comprised of computer software and hardware for communications systems security, traffic and bandwidth management." The differences in the marks coupled with the care with which the goods are purchased outweighed the fact that the goods overlap. In re GENBAND Inc., Serial No. 77627106 (March 30, 2011)[not precedential].


The Examining Attorney contended that Applicant's mark "could be presented in the same manner of display, and the fact that the registered mark is stylized does not obviate a likelihood of confusion." She argued that there is no "defined order" to the cited mark because of the overlap of the S and the 9.

The Board, however, ruled that Applicant's "standard character form mark S9 does not extend to a display of the mark as '9S.'"

The Board must consider a standard character form mark in "all reasonable manners in which in which applicant could depict its mark." ** The manner in which registrant displays the "9" and "S" in its mark is unusual because the "S" is embedded in the leg of the "9," to the right of the mark.

And so the Board found the marks dissimilar in appearance. It also found the sounds to be different: the cited mark is likely to be pronounced as "dot nines," whereas Applicant's mark is pronounced "es-nine." Neither mark has any particular meaning, and the commercial impressions of the marks differ.

As to the conditions of purchase, the Board agreed with Applicant that the goods would be bought with "some care." The goods "have a considerable cost and [purchases] would not be made without deliberation and input from technical personnel."

Balancing the du Pont factors, the Board found no likelihood of confusion.

TTABlog comment: While I agree with the Board's decision, its statement regarding its obligation to consider "all reasonable manners" in which Applicant's mark could be depicted is in conflict with the recent decision of the CAFC in Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) [precedential]. There, the CAFC rejected the "reasonable manner" approach:

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.

As I commented when the CAFC decision came down: 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?

As to the CAFC indication that the Board may look at "illustrations of the mark as actually used," that is of little help when, as here, that application is based on intent-to-use.

Text Copyright John L. Welch 2011.

Finding 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of "eCopy" for Electronic Copying Software

With little fanfare, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of eCopy in standard character form, finding it merely descriptive of "software discs and associated apparatus for enabling the scanning and electronic distribution of documents over computer networks and touch screen control panels for interfacing with such software." Applicant sought registration under 2(f) but its evidence of acquired distinctiveness fell short. In re eCopy, Inc., Serial No. 77682275 (April 15, 2011) [not precedential].


Applicant argued that its evidence "establishes that the mark is not merely descriptive," but the Board pointed out that Applicant applied under Section 2(f) and did not argue inherent distinctiveness during prosecution. The Board therefore focused on the sufficiency of the 2(f) evidence.

Numerous Internet articles and advertisements showed that the term "ecopy" is used by many third parties as a shorthand term for "electronic copy." The "overwhelming" evidence convinced the Board that eCopy is "at the very least, highly descriptive of the goods." The Board noted that "[t]his conclusion is consistent with Board precedent, in which we have recognized the prefix 'e' as a shorthand for 'electronic.'"

With such a highly descriptive mark, "applicant would need a commensurate high degree of evidence to show that its mark has acquired distinctiveness for its goods."

Applicant's 2(f) evidence of sales and advertising was not limited to products sold under the subject mark. Moreover, the evidence lacked context vis-a-vis the industry. Consequently, it had limited probative value.

Applicant also submitted "voluminous" evidence in the form of articles and press coverage, but the evidence was "largely repetitive" and did not clearly use "eCopy" as a source identifier. Moreover, Applicant itself used the term descriptively.

The Board found that "applicant as well as others use the term 'eCopy' (as well as 'ecopies') in a non-source-identifying manner. Applicant has not shown substantial and exclusive use."

And so the Board ruled that Applicant did not meet its burden of proof, and the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.

TTAB Decides "100 BLACKS IN LAW ENFORCEMENT WHO CARE" Ownership Dispute

At her Property, intangible blog, IP Ownership guru Pamela Chestek discusses (here) the Board's recent decision in 100 Blacks in Law Enforcement Who Care, Inc. and 100 Blacks Who Care, Inc. v. 100 Blacks in Law Enforcement Who Care, Opposition No. 91190175 (April 12, 2011) [not precedential]. The Board ruled that Opposer 100 Blacks in Law Enforcement Who Care, Inc. is the owner of the mark 100 BLACKS IN LAW ENFORCEMENT WHO CARE, and it sustained the opposition.

No Need to Disclaim "RED" in VICTORY RED for Golf Equipment, Says TTAB

The Board reversed a refusal to register the mark VICTORY RED for "golf club heads; golf club shafts; golf bags; [and] golf ball markers" absent a disclaimer of the word RED. It ruled that although "red" may "name the color of ornamentation or accent on applicant's goods, the term does not describe any attribute of the equipment itself." In re Nike, Inc., Serial No. 77615883 (March 30, 2011) [not precedential].


Nike claimed that RED is not merely descriptive of the goods because it is "inextricably associated with the professional golfer Tiger Woods. His persona is the red Nike Shirt." According to Nike:

the red accents on Applicant’s products are used to evoke – just as the use of “RED” within VICTORY RED is used to evoke – the connection of three things: (1) the world class golfer Tiger Woods, (2) his red Nike shirt, and (3) winning the game of golf. The mark VICTORY RED makes consumers imagine Tiger Woods wearing the red Nike shirt, and VICTORY RED suggests to consumers that, with VICTORY RED golf equipment, they too can visualize themselves as powerful, victorious golfers.

Nike pointed out that the amount of red on its products is minimal, and in any event are merely an ornamental touch. [Where in the application does it say that the goods [e.g., golf bags] may not be entirely red? Is there any limitation requiring Nike to use the mark only in association with Tiger Woods? - ed.]


The Examining Attorney introduced website excerpts showing third parties using the color red as "accents" on golf clubs. Some third-party registrations of record included a disclaimer of "red," some did not.

The Board noted that the record is "replete with articles ... about the accomplishments of Tiger Woods." According to the Board, "[t]he fact that Tiger Woods wears a red shirt on the final day of a golf tournament is commonly known." [That's news to me - ed.]

The Board concluded that consumers will not perceive RED as describing the golf equipment, even though there may be red ornamentation. It found that Nike's "use of the color red is not prominent or conspicuous, nor is it even a distinguishing feature." [Again, is there any such limitation as to prominence of the color red in the application? ed.].

According to the Board, "[t]he examining attorney has failed to give appropriate consideration to the full context in which the term 'RED' is used as part of applicant's mark VICTORY RED for golf equipment." "The term 'RED," as used in applicant's mark and in the context of the goods, has a greater meaning in context than the fact that the goods display a red accent." [Why should external evidence be relevant at all, when there are no limitations on use in the application? ed.].

The Board found that third-party registrations submitted by Nike suggest that the PTO has on numerous occasions not required disclaimers of color names in trademark, even when the goods display the named color. [What about the PTO's third-party registrations showing the opposite? - ed.].

And so the Board reversed the refusal.

TTABlog comment: I think the Board got this one wrong. It seems to me that it should have considered the possibility that the goods could be sold entirely in the color red, and with no association with Tiger Woods.

So what if Nike would have to disclaim "red" apart from the mark as shown? Big deal. Does Nike really think it has some rights in the word "red" for golf equipment? Maybe someone will oppose.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability on Two More Genericness Cases: MOCCA and SMOKELESS LOG

Here's a brace of recent TTAB genericness rulings that will put you to the TTAB test. The first involves a refusal to register the term MOCCA for "coffee product, namely, coffee beans, and not including coffee-bean derived coffee." [Does that identification of goods make sense?]. In the second, the term SMOKELESS LOG was refused registration for “artificial fireplace logs." How do you think these appeals came out?


In re Barrie House Coffee Co., Inc., Serial No. 76695202 (April 11, 2011) [not precedential]. First, the Board reversed the PTO's refusal to accept as a specimen of use, a rubber stamping of the word MOCCA on a piece of paper, since Applicant's CEO verified that the stamp is used to affix the mark to packaging for the goods. The Board observed that the Examining Attorney was "not in a position to doubt the veracity of applicant's statement."

However, the Board then sustained the PTO's objection to the indefiniteness of the identification of goods. [See Rule 2.32(a)(6), which requires that the application set forth the "particular goods"]. The Board found the phrase "and not including coffee-bean derived coffee" to be "non-sensical and vague in the context of the identification of goods. The identification includes only 'coffee beans' so it is illogical to exclude coffee from that identification."

Turning to the issue of genericness, the Examining Attorney submitted four dictionary definitions of the word "mocha" as "a rich pungent Arabian coffee," and three website excerpts describing the mocha coffee bean. She contended that MOCCA is merely a slight misspelling of "mocha" and does not create a different connotation or pronunciation.

The Board focused on the "definite portion of the identification of goods, i.e., applicant's goods are coffee beans." Deeming the genus of goods to be coffee beans, it concluded that the public will understand "mocha" as identifying a type of coffee bean; therefore "mocha" is generic for coffee beans." [I thought "mocha" was a coffee-chocolate flavor - ed.].

The question, then, was whether MOCCA is also generic for coffee beans. The Board concluded that the misspelling of the generic term "mocha" as MOCCA is immaterial, and that for consumers "who even notice the misspelling, MOCCA will be understood as naming the 'mocha' coffee bean."

The words MOCCA and “mocha” differ by only one letter in the middle/latter part of each word. The accepted pronunciation of “mocha,” noted in the Random House Dictionary excerpt, is with the “ch” having a soft “k” sound. MOCCA is likely to have the same pronunciation as “mocha,” regardless of whether it is the accepted pronunciation or another pronunciation. There is no evidence that MOCCA would be understood as having a different connotation from “mocha.”

And so the Board affirmed the genericness refusal.


In re Michael Weinberger, Serial No. 77915887 (April 14, 2011) [not precedential]. As stated in a recent TTABlog genericness posting (here), for compound words, In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987), says that dictionary definitions alone may suffice to prove genericness, provided that the compounding of the constituent words does not yield a different meaning. For phrases, In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires evidence of the meaning accorded to the phrase as a whole by the relevant purchasing public. But sometimes it seems that the Board will bend the tests like the proverbial nose of wax in order to reach what it considers the correct result. [See, for example, In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential] (ELECTRIC CANDLE COMPANY held to be generic under both tests)].

Here, the Board found SMOKELESS LOG to be "more analogous to the compound word considered in Gould than it is to the phrase considered by the court in American Fertility. See, for example, In re William B. Coleman Co."

In this case, the terms comprising the proposed mark SMOKELESS LOG include the adjective SMOKELESS followed by the noun LOG which it clearly modifies. As such, SMOKELESS and LOG form a union of words, notwithstanding the space between its component terms.

Based on dictionary definitions of "smokeless" and "log," the Board concluded that SMOKELESS LOG "may be defined as a portion or length of a tree trunk or limb that, presumably when burned, emits or produces little or no smoke." The Examining Attorney also submitted website excerpts in which the term "smokeless log" appears.

The Board found the genus of goods to be "artificial fireplace logs," and concluded that SMOKELESS LOG is understood by the relevant public to refer to "at least a subset of that genus of goods."

Applicant argued that the website excerpts point to his own goods, but the Board observed that these materials "show use of SMOKELESS LOG as a generic term as applied to applicant's goods." Moreover, "the fact that other terms, such as 'smokeless artificial logs' or 'logs that produce no smoke' are also available to competitors to use as generic designators for such goods does not diminish the genericness of SMOKELESS LOG."

TTABlog questions and comments: How does the frequently-repeated tenet that "there is no correct pronunciation of a mark" apply here, when the Board discusses the likely pronunciation of MOCCA?

Note that the Board took judicial notices of a definition of "mocha." Why didn't it take judicial notice of the word "rooter" in the recent ROOTER, M.D. case (here), when there was no evidence submitted as to the meaning of "rooter?"

Finally, in both decisions, the Board refers to the term at issue as a "mark," and says that the question is whether the mark is generic. I think that is a nonsequitur. If it's generic, it's not a mark. I prefer to say that the question is whether the "term" or "phrase" or "designation" or "applied-for mark" or "alleged mark" is generic. What do you think? Am I just being too pedantic or persnickety?

Text Copyright John L. Welch 2011.

Swatch Seeks District Court Review of "SWAP" Opposition Dismissal

Swatch AG has filed a civil action in the U.S. District Court for the Eastern District of Virginia, under 15 U.S.C. Section 1071(b) (complaint here), seeking review of the TTAB's dismissal of its opposition to registration of the mark SWAP in stylized form for "watch faces, watch bands, slide pendants, and beaded watch bands." The Board found applicant's mark to be not merely descriptive of the goods, and not likely to cause confusion with or to dilute the registered mark SWATCH for watches, clocks, and parts. Swatch AG v. Bernard, Opposition No. 91169312 (February 23, 2011) [not precedential].


As noted in the TTABlog posting here, the civil action route will give Swatch the opportunity to submit a significant chunk of testimony and evidence that if failed to get into the record before the Board.
.

TTAB Seeks Comments on Its Possible Involvement in Settlement Discussions

In a Notice published (here) today in the Federal Register, the USPTO seeks comments on the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings."

The purpose of this notice of inquiry is to determine whether the involvement of an Administrative Trademark Judge (ATJ) or Board Interlocutory Attorney (IA) would be desirable by parties, and if so, how extensively and at what points in proceedings. In addition, to the extent stakeholders voice a preference for assistance in settlement discussions but prefer such assistance to be provided by mediators or individuals other than Board judges and attorneys, it will be useful for the Board to receive suggestions on this option.

What do you think? Please leave a comment.
.

Despite Fame of "BEAUTYREST" Mark, TTAB Dismissses Opposition to "BEST REST" for Mattresses

To say the least, it was no TTABed of roses for Dreamwell, Ltd. in its opposition to registration of the mark BEST REST for mattresses and related products. Dreamwell claimed mere descriptiveness, likelihood of confusion with its registered mark BEAUTYREST for mattresses and other products, and likelihood of dilution. Although the goods were overlapping and Dreamwell proved fame for Section 2(d) purposes, and despite the fact that Applicant did not take testimony, submit evidence, or file a brief, Dreamwell lost on all three claims. Dreamwell, Ltd. v. Kittrich Corporation, Opposition No. 91188186 (March 29, 2011) [not precedential].

In its "Preliminary Observations," the Board kicked some of the stuffing out of Dreamwell's evidentiary efforts. Dreamwell's witness was an officer of Simmons Bedding Company, but he did not provide any information regarding the relationship between his company and Opposer Dreamwell. However, the Board considered his testimony anyway, with regard to sales and advertising of BEAUTYREST products and the recognition of the mark.

The Board noted that some of the questions asked by Dreamwell's attorney were, "to say the least," leading. Moreover, many responses "were not, in fact, directly responsive to the questions asked, but were more in the nature of argument in favor of Opposer's position." Applicant Kittrich's attorney did not attend the deposition and so did not object; in any case, the Board gave the responses the probative value they deserved.

Finally, Dreamwell submitted a book called A Classic Bedtime Story: 125 Years of Innovation, claiming it to be relevant to show the history of the goods sold under the BEAUTYREST mark. [I used to read that book to my kids. Put them to sleep within 15 seconds - ed.] Of course, that would constitute hearsay, the Board observed.

Mere Descriptiveness: The Board rejected this Section 2(e)(1) claim, finding that "while BEST has a laudatory significance, in this case it modifies the word REST, rather than describing the mattresses and bedding per se."

Thus, while a consumer may understand from the mark BEST REST that, if one uses applicant’s products one will sleep well, it requires a multi-stage reasoning process to do so, rather than an instantaneous understanding from the mark of an attribute of the products.

Likelihood of Confusion: Because the goods overlap and are legally identical, the Board presumed that they travel through the same channels of trade to the same classes of customers.

Dreamwell claimed that the mark BEAUTYREST is famous, but some of its proof of fame was "problematic." Its efforts to put its sales and advertising figure in context were "surprisingly limited." Nonetheless, viewing the evidence as a whole, and particularly the "extraordinarily long time" during which the mark has been used, coupled with the substantial sales figures, the Board found that the mark is famous.

However, the Board noted that, for Section 2(d) purposes (and unlike for dilution purposes, where fame is an all-or-nothing proposition), "fame varies along a spectrum from very strong to very weak." "In this case, because of the problems with opposer's evidence of fame we have detailed, we treat the fame of opposer's mark to be on the weak end of the spectrum."

As to the marks, since REST is highly suggestive of the goods, and because the words BEST and BEAUTY are the first words in the marks, they are the more prominent features. The Board therefore found that the marks "differ in appearance, sound, connotation and commercial impression."

the fact that the two words in applicant’s mark rhyme provides a further distinction, both because of the rhyme itself and because the rhyme emphasizes the word BEST. As for connotation, opposer’s mark calls to mind the phrase “beauty sleep,” while applicant’s mark suggests that its products will result in the best or most restful sleep that one has ever had.

The Board concluded that the dissimilarity of the marks outweighs the other du Pont factors, despite the fame of Opposer's mark.

In effect, to reach the conclusion that confusion is likely because BEAUTYREST is a famous mark would essentially give opposer exclusive rights to the highly suggestive word REST, or to the word REST if a term beginning with the letter B were used with it. However, as the case law we quoted above states, having a famous mark does not give the owner thereof a right in gross.

Dilution: Opposer's proof of "weak" fame is "certainly not sufficient to prove that the mark is famous for dilution purposes." Furthermore, "the degree of similarity of the marks is quite limited." Weighing all the dilution factors, the Board concluded that Dreamwell had failed to prove its likelihood of dilution claim.

TTABlog comment: Wow! What a nightmare for Dreamwell! Reminded me of Ali's rope-a-dope of Foreman in the Rumble in the Jungle.

Suppose Dreamwell had put in more and/or better evidence of fame. At what point along the 2(d) fame spectrum would the judicial mattress be flipped in its favor?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are "ROOTER, MD" and "ROOTER-MAN & Design" Confusingly Similar for Plumbing Services?

A Corp. opposed an application to register the mark ROOTER, MD for plumbing services [ROOTER disclaimed], claiming likelihood of confusion with its registered ROOTER-MAN & Design mark shown below, for "cleaning and repairing septic systems and clearing clogged pipes and drains." Do you think the marks are confusingly similar? A Corp. dba Rooter Man v. Pete Wood Plumbing and Heating Co., Opposition No. 91187976 (March 21, 2011) [not precedential].


Opposer alleged that its mark is famous in the plumbing field. However, it failed to provide evidence of sales volume or advertising expenses, market share, or frequency of consumer encounters, and in fact did not establish the renown of its mark "to any degree." So this factor was considered "neutral" in the du Pont analysis.

The services involved are overlapping, and therefore the Board presumed that the services are rendered in identical trade channels to the same consumers.


The Board then turned to the crux of the case: the marks. As usual, it found that the word portion of Opposer's mark is dominant, and further that ROOTER-MAN "would be used by purchasers asking for opposer's services."

Moreover, the word ROOTER is the dominant portion of the word portion of the mark. [doubly-dominant? - ed.]

The terms ROOTER and MAN in opposer’s mark are visually distinct from one another because, not only are they separated by a small hyphen, but ROOTER appears in dark letters and MAN appears [in] an outline of white letters. Within the word portion of the mark, we find that ROOTER is the dominant portion thereof. Not only is it the first word in the mark and appears in dark letters, but MAN is likely to be understood as suggesting the person who renders opposer’s services. In this regard, we note that the second term in applicant’s mark is MD and it too is likely to be understood as suggesting the person who renders the services.

Furthermore, there was no evidence in the record of any meaning of ROOTER in the field, nor any evidence of third-party uses. Therefore, the Board concluded that ROOTER is "an arbitrary and strong term" in connection with the involved services.

And so, despite the differences in the marks, the Board found them to be "similar in appearance, sound, connotation, and commercial impression," and it sustained the opposition.

TTABlog comment: I think MAN is the dominant word in Opposer's mark. It seems to stand out more than ROOTER.

And what about that lack of evidence that ROOTER is descriptive? Someone was asleep at the switch. Try a search of the PTO database for marks with the word ROOTER disclaimed, and see what you get.

If I were applicant, I would consider seeking review by way of civil action, where additional evidence is permitted.

Text Copyright John L. Welch 2011.

Finding TOVARICH Confusingly Similar to TVARSCKI for Vodka, TTAB Grants 2(d) Petition for Cancellation

Respondent failed to prove laches, lost the priority battle, and saw its registration for the mark TOVARITCH for vodka kick the ice bucket. The Board granted this Section 2(d) petition for cancellation in view of likely confusion with the registered mark TVARSCKI for vodka and gin. Luxco, Inc. v. Tovaritch & Spirits International SARL, Cancellation No. 92047201 (March 24, 2011) [not precedential].


Testimony stricken; Respondent dialed a wrong number when it took the testimony of its trial witness by telephone, with the witness in Switzerland and the court reporter in Ossining, New York, at the office of Respondent's attorney. The Board sustained Petitioner Luxco's objection, ruling that, when FRCP 28(b)(1)(C) says that "a deposition may be taken in a foreign country: on notice, before a person authorized to administer oaths," that means that the witness must be in the presence of the official recording the testimony.

Priority: As a sanction during discovery, Respondent was unable to contest priority, provided that Petitioner put in a prima facie case. Luxco did so by submitting its own registration, which pre-dated Respondent's filing date.

Laches: Respondent was required to show undue delay and resulting prejudice. The challenged registration issued on January 9, 2007. This proceeding was commenced two months later, on March 9, 2007. There was no evidence that Petitioner was aware of Respondent's use in the United States or its application to register prior to January 9, 2007. Therefore, Respondent failed to show undue delay.

Likelihood of Confusion: Because the goods overlap, the Board presumed that the parties' vodka travels in the same channels of trade to the same classes of consumers.

Since the goods are identical, a lesser degree of similarity is necessary to support a finding of likelihood of confusion. The Board observed that TVARSCKI is "an arbitrary or even fanciful mark," with no dictionary definition or translation. "[N]or is it apparently a surname."

Comparing the two marks, we find that both are arbitrary marks beginning with an unusual “TVAR” or “TOVAR.” Both have a Russian “look and feel.” As to the sound, it is well-settled that there is no correct pronunciation of a trademark. In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984). Accordingly, we find it plausible that consumers will pronounce these marks similarly. Certainly, the beginnings of the marks appear to be quite similar.

The Board concluded that the dissimilarities in sight and sound are outweighed by the similarities in commercial impression.

Balancing all the factors, and resolving doubt in favor of the prior registrant, the Board granted the petition for cancellation.

TTABlog comment: I continue to maintain that sometimes there is a correct pronunciation of a trademark. Examples: BLACK CAT for fireworks, APPLE for computers, TTABLOG ... oh, forget that one. Anyway, I don't see how TOVARICH and TVARSCKI can be pronounced similarly.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability on These Two Genericness Cases: APPLICATIONSONLINE and BUBBLESEAL

Let’s see how well you do on these two appeals from PTO genericness refusals. In the first, the Examining Attorney refused registration of APPLICATIONSONLINE for "computer services, namely, development and creation of software for web based applications to allow prospective college students to submit admissions applications online via a global computer network.” In the second, the term BUBBLESEAL was refused registration for “non-metal seals for use in opening a package, sold as an integral component of plastic packaging for commercial use.” What do you think?


Remember that, under applicable law, for compound words, In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987), says that dictionary definitions alone may suffice to prove genericness, provided that the compounding of the constituent words does not yield a different meaning. For phrases, In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires evidence of the meaning accorded to the phrase as a whole by the relevant purchasing public. But sometimes it seems that the Board will bend the tests like the proverbial nose of wax in order to reach what it considers the correct result. [See, for example, In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential] (ELECTRIC CANDLE COMPANY held to be generic under both tests)].

In re Applications Online, LLC, Serial No. 76684479 (March 28, 2011) [not precedential]. The Board found APPLICATIONSONLINE to be “more analogous to the phrase considered by the court in American Fertility than it is to the compound word considered in Gould. That is to say, unlike the term SCREENWIPE contemplated by the Federal Circuit in In re Gould, supra, APPLICATIONSONLINE appears to be a phrase comprising its constituent words, and not a compound word.”

The Board concluded that the Examining Attorney had failed to show genericness by the required clear evidence. The website evidence that she submitted, which used the term “application online” or “applications online” in several contexts did not establish that APPLICATIONSONLINE primarily refers to computer services of the type that Applicant provides.

And so the Board reversed the refusal.

In re PopPack LLC, Serial No. 77544768 (March 31, 2011) [not precedential]. The Examining Attorney submitted dictionary definitions of “bubble” and “seal” and pointed to Applicant’s patent application, where the term “bubble-wrap” is used generically.

The Board applied the Gould test to this compound term, ruling that: "The record establishes that the individual components of applicant’s mark are generic for the offered goods, specifically non-metal seals for use in opening a package, sold as an integral component of plastic packaging for commercial use, and their combination lends “no additional meaning to the term.”

And so the Board affirmed this refusal.

TTABlog comment: Well, how did you do? Do you think COLLEGEAPPLICATIONSONLINE would be found generic? Is it a phrase or a compound word?

Text Copyright John L. Welch 2011.

TTABlogger Makes World Trademark Review 1000 List

And now a brief marketing message. Yours truly has been named to the World Trademark Review 1000. (link here).

Reminder: 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 Lockheed Martin Corporation v. Raytheon Company, Opposition No. 91167189, 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.

TTAB Finds WAGGIN' STRIPS Confusingly Similar to BEGGIN' STRIPS for Pet Treats, But No Dilution or Lack of Bona Fide Intent

Despite Applicant's dogged efforts to distinguish the marks, the Board sustained this Section 2(d) opposition to registration of the mark WAGGIN' STRIPS for pet food and edible pet treats [STRIPS disclaimed], finding it likely to cause confusion with the registered mark BEGGIN' STRIPS for dog snacks [STRIPS disclaimed]. However, the Board dismissed Opposer Nestle's dilution claim for failure to prove fame, and jettisoned its lack-of-bona-fide-intent claim despite Applicant's paucity of documentation. Societe Produits de Nestle S.A. v. Midwestern Pet Foods, Inc ., Opposition No. 91163853 (March 31, 2011) [not precedential].


In the first third of this 42-page decision, the Board dealt with various evidentiary issues, concluding that some exhibits should be stricken because they were not timely produced during discovery or were not proper subjects for a notice of reliance, and overruling other objections on the ground that the discovering party never challenged (via motion to compel) the producing party's objections made during discovery.

Likelihood of Confusion: Nestle contended that its BEGGIN' STRIPS mark is famous, but its evidence of sales and advertising expenditures was "inconsistent" and lacked context. However, Nestle did show that its mark, in use since 1988, "has achieved at least a high degree of recognition," and is a "distinctive and strong" mark and entitled to a broad scope of protection.

As to the goods, the Board found Applicant's "pet food and edible pet treats" to be so broadly identified as to encompass Nestle’s dog snacks, and therefore it considered the them to be legally identical.

The Board therefore presumed that the goods travel through the same trade channels to the same classes of customers. Moreover, the goods are relatively inexpensive and would be purchased with no more than ordinary care.

As to the marks, the Board observed once again that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. In appearance, "the marks ... look similar to the extent that both have the same format, structure and syntax; both being comprised of two words, the first word in each ending in 'GGIN'' and the second in each being the word STRIPS." As to sound, the marks are "similar in rhythm and cadence, both having three syllables, the final two of which would be pronounced the same."

As regards connotation, since both parties’ goods include edible pet treats, the term “strips” would mean the same thing in relation to both marks. In addition, both “WAGGIN’ and BEGGIN’ evoke images of, albeit somewhat different, dog behaviors. As such, both marks, as a whole, connote types of treat that elicit certain canine behavior.

Applicant argued that Nestle’s mark means “bacon strips,” whereas its mark contains no such wordplay or hidden meaning.

The evidence, however, is not conclusive that consumers understand BEGGIN’ STRIPS only to mean bacon strips. Indeed, even if BEGGIN’ STRIPS is understood by some consumers to mean “bacon strips,” as just noted, the plain meaning of BEGGIN’ STRIPS is of strips treats intended to elicit certain canine behavior, and that same connotation can be attributed to applicant’s WAGGIN’ STRIPS mark. *** Further, in considering the meanings of the marks, we must consider the meaning of opposer’s mark not only when heard, but also when read. When read, the meaning conveyed by BEGGIN’ STRIPS is not “bacon strips.”

Finally, as to commercial impression, the Board found the marks to be "very similar," since they are "two-word marks which are constructed in the same way. They both begin with similarly spelled words that describe attributes of dog behavior and end with the identical word STRIPS."

The Board rejected Applicant's contention that it should consider that Nestle's mark is "generally used in connection with the Purina house mark and checkerboard design." Likewise, it rejected Applicant's assertion that consumers would not believe that a product called WAGGIN' STRIPS is part of Nestle's BEGGIN' line of products. As the Board observed for the zillionth time: "we must compare the marks as they appear in
applicant's application and the pleaded registration."

And so the Board found confusion likely, and it sustained the Section 2(d) claim.

Dilution: Since Nestle failed to prove fame for Section 2(d) purposes, it could not meet the higher standard for proof of fame under Section 43(c).

Lack of Bona Fide Intent: Although Applicant's documentary evidence consisted only of mock-up packaging, "Applicant's witness .. testified to applicant's general practice when selecting a trademark for a new product, and there is no indication that the practice was not followed."

Mr. Montooth testified that due to the large costs related to manufacturing and launching new pet food and treat products, applicant does not fully develop the product or packaging until the application has been allowed to register by the United States Patent and Trademark Office.

Although Mr. Montooth testified during discovery that the mark "has not been and may never be used," that statement does not negate applicant’s bona intent to use the mark, because applicant’s mark had yet to clear the application process."

Moreover, unlike the situation in Commodore Electronics [lack of documentation established prima facie case of lack of bona fide intent), here Applicant "is not only a competitor in the pet treat industry with the capability to manufacture strips, but applicant currently manufactures other strips-type products and does not have numerous intent-to-use applications pending for the same goods."

And so the Board found that Nestle had failed to establish a prima facie case of lack of bona fide intent.

TTABlog comment: The bona fide intent discussion is the most interesting part here. That seemed to be Applicant's best shot, even if not a great one.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is "RALPH LAUREN STIRRUP COLLECTION" for Watches Confusingly Similar to "STIRRUP" for Jewelry?

The PTO refused registration of the mark RALPH LAUREN STIRRUP COLLECTION for "horological and chronometric instruments and parts thereof," finding it likely to cause confusion with the registered mark STIRRUP for jewelry. Applicant asserted that "stirrup" is highly suggestive for "equestrian styled" jewelry, that the Examining Attorney improperly dissected Applicant's mark, and that the addition of the famous RALPH LAUREN mark eliminates any likelihood of confusion. How would you rule? In re PRL USA Holdings, Inc., Serial No. 77634450 (March 21, 2011) [not precedential].


The Examining Attorney contended that the goods "have similar uses" and are marketed in the same trade channels. The addition of RALPH LAUREN to the registered marks "adds to the likelihood of confusion with registrant’s mark, rather than acting to distinguish the marks." [How so? - ed.] And even if the record shows that the registered mark is weak, even weak marks are entitled to protection against registration by a subsequent user of a similar mark for related goods.

The Board agreed with the PTO that watches and jewelry may emanate from the same source. It presumed that the goods are sold in the same trade channels to the same classes of consumers, including ordinary consumers. [Applicant's argument regarding the expensive nature of its goods was ignored, since there is no such limitation in its identification of goods.]

As to the marks, the Board noted that, in general, adding a house mark to another's registered mark does not avoid likely confusion. However, there are exceptions to that general rule: 1) if the marks in their entireties convey significantly different commercial impressions; or 2) if the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.

The Board concluded that this case falls within the second exception, because of the "rampant use of the term 'stirrup' in connection with a certain type of jewelry. Applicant submitted numerous third-party website pages listings a "wide variety of jewelry items consistently described as 'Stirrup Jewelry'; in each case, the item is in the shape of an equestrian stirrup."

Based on the record, we find that the term common to the marks, “STIRRUP,” is less likely to be perceived by purchasers as a distinctive term serving to distinguish source because it is diluted in the jewelry field. Thus, the addition of applicant’s house mark, RALPH LAUREN, in applicant’s mark is sufficient to distinguish its mark from the cited mark.

Furthermore, the Board pointed to the assertion that Applicant's watches are "equestrian inspired" [Where is that in the identification of goods? -ed.], and that one of Registrant's rings sold under its mark has a stirrup shape.

Noting that the it is not concerned with a "speculative, theoretical possibility" of the likelihood of confusion, the Board reversed the refusal.

TTABlog comment: Well, how did you do? Do you agree with the decision? If stirrup is so weak or descriptive, why didn't Applicant have to disclaim it?

Text Copyright John L. Welch 2011.

Precedential No. 10: TTAB Okays Opposer's Pre-Trial Disclosures, Denies Motion to Strike Trial Testimony

Applicant Carl's Bar moved to strike Opposer's trial testimony and exhibits, asserting that Opposer did not timely serve its pre-trial disclosures nor file them with the Board, and further that the information Opposer did provide prior to trial was insufficient. The Board, however, found that Opposer did serve its disclosures in timely fashion, ruled (not surprisingly) that pre-trial disclosures need not be filed with the Board, and concluded that Opposer's disclosures were adequate. Carl Karcher Enterprises, Inc. v. Carl's Bar & Delicatessen, Inc., 98 USPQ2d 1370 (TTAB 2011) [precedential].


Timeliness: Opposer served its pre-trial disclosures on October 13, 2009, one day before the due date. Subsequently Opposer filed for summary judgment, and when that motion was denied on August 11, 2010, the Board reset the deadline for opposer's pretrial disclosures. The deadline was again reset in a September 15, 2010 order. This rescheduling was merely routine, and took into account "the possibility that opposer had not served pretrial disclosures prior to filing its motion for summary judgment, or that circumstances had changed since the filing of any earlier disclosure, such that a new or amended disclosure would be appropriate."

The Board ruled that there was no need for Opposer to re-serve the disclosures each time the date was re-set. [Doh!] The only obligation would be to supplement or the disclosures as necessary.

Filing?: Trademark Rule 2.121(e) does not require a party making a pretrial disclosure to file same with the Board. Moreover, "there is no significant reason why a party should be required to file its pretrial disclosures with the Board."

Alerting the Board to the existence of a party's witness list is not a purpose of the pretrial disclosure requirement. This is so because the Board does not preside at the taking of testimony, or at a pretrial conference. See TBMP §702 (2d ed. rev. 2004). Instead, all testimony is taken out of the presence of the Board, and the written transcripts thereof, together with any exhibits thereto, are then submitted to the Board. TBMP § 702 (2d ed. rev. 2004).

Adequacy of the Disclosures: Opposer named its potential witness and provided a general summary of the topics upon which the witness was expected to testify and a general summary of the types of documents and things to be introduced during the testimony of the witness. '[T]he circumstances of this case do not involve presentation of a witness or exhibits not revealed by the original disclosure and thus there is no issue regarding a failure to timely amend or supplement the disclosure."

And so the Board denied the motion and issued a new scheduling order for the remainder of the case.

TTABlog comment: WYHDTP? Would you have deemed this precedential?

Text Copyright John L. Welch.

Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"

Third-party registrations and website evidence led the Board to conclude that wine and beer are related goods, and so it affirmed a Section 2(d) refusal to register the mark HB for wine, finding it confusingly similar to the two registered design marks shown below, for beer. The Board was unimpressed by Applicant Kysela's attempt to distinguish the marks based on Registrant's history as the royal brewhouse of Bavaria, Germany in the 16th century. In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB 2011) [precedential].


Third-Party Registrations: Examining Attorney Ronald L. Fairbanks submitted a substantial number of third-party registrations (about twenty being probative) showing that various entities have registered a single mark for both beer and wine. Applicant argued that there are thousands of applications and registrations that include beer or wine in their identification of goods, and so the thirty or so submitted by the PTO constitutes "a negligible percentage (.00025-.00053) and not nearly enough to establish a relationship between the goods sufficient to lead to a finding of likelihood of confusion."

The Board was not persuaded. First, it criticized Applicant's methodology and its failure to provide complete information regarding these records. Second, "[m]ost importantly, the fact that the examining attorney submitted approximately twenty probative third-party registrations listing beer and wine does not mean that they are the only registrations that include these goods." There is no requirement that the Examining Attorney submit all such registrations.

The Board also noted that it has rejected a similar argument in the past: "There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product. *** Second, the mere fact that some goods are not included in a registration’s identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration.... Third, the law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items." In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009).

The Board concluded that this third-party registration evidence sufficed to establish the relatedness of the goods.

Third-Party Uses: The Examining Attorney also submitted website evidence showing that various companies make and sell both wine and beer. This lent "further support" to the Board's "conclusion that the goods are related because the websites show that consumers have been exposed to the concept that wineries also make and sell beer."

Natural Scope of Expansion: The Board reminded the PTO that this doctrine is "more appropriate to inter partes cases, and that in the context of an ex parte proceeding the analysis should be whether consumers are likely to believe that the services emanate from a single source, rather than whether the owner of the cited registration has or is likely to expand its particular business to include the goods of applicant."


The Marks: Applicant contended that the crown design dominates the registered marks and is sufficient to distinguish the marks at issue. According to applicant, the crown design "indicates [Registrant's] royal pedigree, and implicitly signifies royalty even to those who may not be aware of the company’s history."

The Board was not impressed. "Although information about the registrant’s history appears on the company’s website, we cannot assume that ordinary purchasers encountering the beer on a store shelf will be aware of the history of the German company." Consumers are likely to view the design as merely laudatory.

Applicant further argued that the registered marks could be read as "I-B," but the Board observed that many will view the letters as HB. Furthermore, because applicant’s mark is in standard characters, a registration would provide protection for applicant’s use of HB with a shared vertical element. In any case, because the letters HB dominate the registered marks, the involved marks are, overall, similar in appearance.

As to pronunciation, there was no evidence that consumers would, as Applicant argued, refer to the crown design, contrary to the general principle that in word and design marks, the word portion is dominant. Nor would consumers recognize that HB stands for "hofbrauhaus."

[B]ecause “Hofbrauhaus” is not part of the cited marks, and because the only element of the registrant’s marks that can be articulated is “HB,” which is identical to applicant’s mark HB, we find that the marks are identical in pronunciation

Similarly, as to meaning, Applicant's mark would connote only the meaning "HB." And so the Board found that the marks, in their entireties, convey the same commercial impression.

Further observing that the goods will be sold in the same trade channels to the same classes of consumers, who are not particularly sophisticated, the Board affirmed the Section 2(d) refusal to register.


TTABlog comment: It always surprises me when beer and wine are found related. Maybe I should drink more, but I cannot recall ever seeing beer and wine actually sold under the same mark.

Text Copyright John L. Welch 2011.

WYHA? TTAB Finds CALIFORNIA GREEN CLEAN Primarily Geographically Descriptive of Janitorial Services

The USPTO refused registration of the mark CALIFORNIA GREEN CLEAN for "janitorial services; maid services," finding it to be primarily geographically descriptive under Section 2(e)(2). Applicant conceded that CALIFORNIA is a geographical term and that Applicant is located in California, but it contended that the mark is a unitary term composed of the distinctive word "California" and the suggestive term "Green Clean," and, therefore, that the mark in its entirety is suggestive. Would you have appealed? In re California Green Clean Development Company, LLC, Serial No. 77342688 (March 21, 2011) [not precedential].


The test for determining whether a service mark is primarily geographically descriptive has two prongs: (1) the mark (or portion thereof) must be the name of a place known generally to the public; and (2) the public must believe that the services originate in that place (i.e., there must be a services/place association). If the services do in fact originate from the place named, the requisite services/place association may be presumed.

The Board commended Examining Attorney Daniel Capshaw for the clear, concise, and organized manner in which he submitted the PTO's evidence, which included pages from Applicant's website, newspaper articles, and third-party website pages using the term "green clean" descriptively.

A "sizable number" of third-party registrations submitted by Applicant for marks that include "Green Clean" showed "that the term has a recognized meaning in the field and corroborates the evidence of descriptiveness submitted by the examining attorney." Applicant also submitted three publication in which "Green Clean" is used descriptively. [Why Applicant submitted this evidence is not clear - ed.]

Applicant asserted that the word CALIFORNIA is "distinctive" because it "primarily designates ... a high quality, progressive, environmentally-attuned kind or style of maid and janitorial services, rather than primarily providing information about geographic origin." The Board, however, swept that argument aside, finding that "California" conveys "a readily recognizable geographic significance that is not obscure or remote but rather is generally known to the public."

Applicant also argued that CALIFORNIA GREEN CLEAN is unitary because "when spoken, [it] follows a memorable, elementary musical rhythm and rhyme" and because the three components of the mark have "internal crosssuggestivity" in that "each of the three words is suggestive of the other two." [Huh? - ed.]

No soap, said the Board. It found nothing in the record to support a finding that CALIFORNIA is anything other than a geographic term. Instead it found that the primary significance of CALIFORNIA GREEN CLEAN is geographic, since "[t]he addition of a descriptive term ('Green Clean') to a geographical term does not overcome the primary geographic significance of the mark as a whole." [Say again? ed.]

In short, it found that "the primary significance of applicant’s mark CALIFORNIA GREEN CLEAN is that applicant’s janitorial and maid services originate from a California-based company."

Moreover, since the services originate at the place named in the mark, the Board presumed an association of applicant's services with California. Furthermore, it found that "consumers for applicant's services would reasonably believe that those services originate from a California-based entity."

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.

WYHP? Petition to Cancel Backfires When TTAB Finds "SNAP" Merely Descriptive of Syringes

Ouch! Inviro Medical's petition for cancellation of a registration for the mark BAKSNAP & Design (shown below) for "safety syringe for medical use" snapped back and knocked out three of Inviro's pleaded registrations. Respondent DuoProSS counterclaimed for cancellation of five registrations for marks comprising or containing the word SNAP for syringes: three for the word SNAP in standard character form, one for SNAP! & Design (shown to the right), and one for the slogan SNAP SIMPLY SAFER. Inviro withdrew its petition for cancellation, but the Board proceeded to rule on DuoProSS's counterclaims. All of which leads to this question: Would You Have Petitioned for cancellation in the first place? Inviro Medical Devices Ltd. v. DuoProSS Meditech Corporation, Cancellation No. 92046702 (April 5, 2011) [not precedential]. [Reconsideration denied here].


SNAP: One registration for SNAP was an erroneously-issued duplicate of another, so the Board cancelled it for that reason. As to the remaining two SNAP registrations, the Board found the word "snap" to be merely descriptive of "a significant feature" of the goods, "namely that to disable them, one must snap off the plunger." Petitioner Inviro maintained that "snap" has a second meaning: that the syringes are easy to use: i.e., a "snap to use." The Board rejected this double entendre argument because both meanings are not "readily apparent from the mark itself."

If the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of advertising materials or other matter separate from the mark itself, then the mark is not a double entendre. See In re the Place, Inc., 6 USPQ2d 1467, 1470 (TTAB 2005).

Here there was no evidence that purchasers would, "upon seeing the mark itself, understand this meaning."

Petitioner further contended that its mark SNAP has acquired distinctiveness, but it provided no evidence of advertising expenditures, or surveys or affidavits from third parties. Although its sales were in the millions of units annually, that figure was not put in context, such as by market share. So it failed to prove acquired distinctiveness as of the registration date, and these two registrations for SNAP were cancelled under Section 2(e)(1).


SNAP! & Design As to this mark, the Board rejected Respondent DuoProSS's assertion that the mark, as a whole, is descriptive. The design element "is not a visual representation" of Petitioner's product, or a significant characteristic thereof; it "only suggests the breaking of something." Moreover, the Board refused to require a disclaimer of the word "snap," finding this word-and-design mark to be unitary.

SNAP SIMPLY SAFER: Finally, the Board found that Respondent DuoProSS failed to show that this slogan is, as a whole, merely descriptive of the goods. SNAP is descriptive, SAFER may be suggestive, and SIMPLY does not merely describe an attribute of Petitioner's goods. The phrase "does not merely impart information about a significant characteristic of the goods." Moreover, SIMPLY SAFER is mere puffery." However, the Board did require a disclaimer of the word SAFE, since it is "not lost in the term as a whole," and it provisionally sustained the petition for cancellation due to lack of the disclaimer. [Got all that? ed.]

In sum, the Board sustained four counterclaims, but as to the slogan mark, the Board allowed Petitioner thirty days to submit a disclaimer of SNAP, in which event the decision as to this registration will be set aside.

TTABlog comment: I don't quite understand why SNAP must be disclaimed in one mark (the slogan) but not the other (the word-and-design). Does it make any practical difference anyway?

Text Copyright John L. Welch.

Transcript of December 3, 2010 USPTO "Trademark E-Gov Best Practices Roundtable"

In case you are looking for something to read over the weekend, try the transcript of the USPTO's December 3, 2010 roundtable discussion of "Electronic Communication for Trademark Matters." [download Word document here]. I'll have plenty of time to read it on my plane trip to California on Sunday.

WYHA? TTAB Affirms 2(d) Refusal of LOWFARES.COM over LOWESTFARE.COM for Travel-Related Services

Applicant huffed and puffed but failed to get off the ground in seeking reversal of this Section 2(d) refusal to register the mark LOWFARES.COM for on-line price comparison and informational services in the field of travel. The Board found the mark likely to cause confusion with the registered mark LOWESTFARE.COM for Internet travel agency services. Applicant even submitted survey evidence, a rarity during trademark prosecution, but the Board found that the survey had little probative value. Take a good look. Would you have appealed? In re Oversee.net, Serial No. 77542010 (March 28, 2011) [not precedential].


Not surprisingly, the Board found the marks to be "very similar in terms of sound, appearance, meaning and commercial impression."

As to the services, Applicant feebly argued that the involved services are mutually exclusive and unrelated. The Board, however, found them to be "closely related." "The fact that applicant's consumers have to click on a link to complete a booking is not sufficient to distinguish the services sufficiently to obviate a likelihood of confusion."

The Board also found that the trade channels and classes of purchasers overlap. As to the conditions of sale, the Board agreed with Applicant that consumers purchasing transportation or lodging exercise a "higher degree of care." But that fact does not outweigh the other relevant du Pont factors.

Applicant lamely pointed to the lack of actual confusion, but the Board observed once again that the test is likelihood of confusion. Moreover it was unclear whether there has been any meaningful opportunity for confusion to occur, since Applicant advertises via sponsored links, whereas Registrant does not, and so Registrant's advertisements "will not necessarily appear on the first page of the search result."

Applicant also pointed out that Registrant had not objected to its use of the applied-for mark. The Board found this fact to have minimal probative value, since the issue here is registration, not use. Moreover, it would require "impermissible speculation as to whether registrant is aware of applicant's use and if so why it has not objected to that use."

Finally, Applicant relied on an Ever-Ready survey purportedly demonstrating no likelihood of confusion, but the Board found it of little probative value.

[W]e find that it is compromised by the initial statement to the survey participants. In the preliminary statement of purpose, the participants are told “that the research [is] related to website names.” The reference to “website names” does not prepare the participant to perceive these examples as brands or trademarks but rather more as simply the virtual world’s version of an address. Therefore, it is not surprising that when asked questions about who operates the LOWFARES.COM website, or if the website is operated with the approval or consent of any other company or affiliated with any other company, the vast majority of responses pointed to other unnamed third parties such as “airlines” or “a travel agency” and the next highest was one of the listed well-known websites ORBITZ. It appears clear from the results that the questions referring the participants to “any other company” prompted them to conjure up unnamed third parties.

Although both marks are conceptually weak, "even weak marks are afforded protection." And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms Section 2(e)(1) Mere Desciptiveness Refusal of STRETCH FIT for Incontinence Briefs

In refusing registration of the mark STRETCH FIT as merely descriptive of "incontinence briefs," Examining Attorney Michael Souders relied on dictionary definitions of "stretch" and "fit" and website pages showing use of the phrase in connection with those goods as well as with underwear and various clothing items. Would you have appealed? In re First Quality Products, Inc., Serial No. 77672102 (March 14, 2011) [not precedential].


The Board found that these Internet uses, as well as the definitions, "establish that the purchasing public of applicant's goods would immediately recognize, without imagination or thought, that 'stretch fit' refers to a fit obtained through the stretching of applicant's incontinence briefs."

Applicant feebly pointed to its application for CORRECT-FIT for incontinence products, which mark was published for opposition without any disclaimer. The Board, of course, pointed out that such evidence doesn't hold water, since CORRECT-FIT is a different mark.

Next, Applicant lamely asserted that "much" of the Examining Attorney's evidence is irrelevant because it does not concern incontinence briefs. The Board again disagreed, observing that the evidence regarding incontinence briefs was itself sufficient, and that the other evidence has probative value as well.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability On This Section 2(d) Refusal of "EZ DOG & Design" for Animal Toothbrushes

The Examining Attorney refused registration of the mark EZ DOG & Design (shown immediately below) for "toothbrush, namely, for animal use," finding it likely to cause confusion with the registered mark EZEEDOG & Design shown next below, for various goods including "brushes for pet care." The Examining Attorney submitted a single third-party registration that included both animal brushes and toothbrushes. So what do you think? Are the goods and marks too close? In re Benedent Corporation, Serial No. 77666733 (March 14, 2011) [not precedential].



The Examining Attorney maintained that the marks are highly similar and (focusing on brushes) the goods overlapping but otherwise closely related. Applicant bristled, and argued otherwise.

According to the Examining Attorney, the term "brushes for pet care" is broad enough to cover "toothbrushes for animal use." The Board disagreed:

A toothbrush is a specific item that is called a "toothbrush"; the term "brushes for pet care" has a different meaning, identifying brushes used in grooming the coats of animals. Certainly nothing in the record leads us to conclude that the term "brushes for pet care" would ever be presumed to include toothbrushes for animals.

Alternatively, the Examining Attorney contended that third-party registrations demonstrate that pet brushes and toothbrushes may emanate from a single source. But the Board found that the EA was barking up the wrong tree. Of the four registrations submitted, only one includes both toothbrushes for animals and brushes for pets. The Board refused to consider one registration "as indicative of what is occurring in the marketplace."

As to channels of trade, the PTO's evidence again fell short. It included pages from the websites of two national pet-supply chains, but as to one, the products do not appear side-by-side on the same screen, and as to the other, the two products are sold under different trademarks.

Turning to the marks, the Board agreed with Applicant that the differences are "significant" and that the "stark dissimilarities in appearance engender quite different commercial impressions."

[T]he degree of stylization in applicant's entire mark pushes it toward a gray region between pure design marks, which cannot be vocalized, and word marks which are clearly intended to be vocalized. That is, although applicant’s mark contains letters that one eventually recognizes as "EZ DOG," in many ways it has more the feeling of a design mark. We conclude that this visual character of applicant's mark dominates the commercial impression conveyed by the mark.

By contrast, while the cited registered mark is a composite mark having a prominent design feature, it is still primarily a word mark.

Therefore, although the literal portions of the marks are phonetically equivalent, that fact is not determinative.

Unlike some types of consumer goods (e.g., children's toys), animal toothbrushes do not seem to be the kind of item that persons recommend by brand. Instead, consumers may simply peruse the store aisle containing health and dental products for animals. The pet owner in search of such a device is likely looking for a particular design of pet toothbrush – e.g., one having a single set of bristles, dual ended, three separate heads, plastic finger toothbrush, etc.

In the context of the marketing of the subject goods, "the strong dissimilarities in the visual appearances of the marks and the consequent differences in commercial impressions outweigh the similarity in pronunciation and meaning of the words contained within the marks."

And so the Board reversed the refusal.

TTABlog comment: What do you think of the Board statement about how consumers are likely to go about shopping for animal toothbrushes? Is this something that falls within the realm of judicial notice? Should the Board have relied on this point without evidence to support it?

Text Copyright John L. Welch 2011.