TTAB Reverses Refusal to Register Lacquered Pet Food Container Design, Finding it Inherently Distinctive

Applying the Seabrook test, the Board reversed a refusal to register the product packaging shown below, for "pet food," finding it to be inherently distinctive. The Examining Attorney, relying on several round pet food containers on the market, asserted that the configuration is "a common basic shape or design for pet food packaging," but the Board was not persuaded. In re Mars, Incorporated, Serial No. 77727119 (May 16, 2011) [not precedential].


Applicant's packaging design "consists of a round bowl-shaped, inverted and lacquered pet food container. The top of the container has a center circle with a wider larger lip at the bottom with various placement lines representing a lacquered finish. The inverted nature of the container and the lacquered finish are claimed as features of the mark."


Under Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977), the Board considers the following factors in determining whether a design is (inherently) arbitrary or distinctive:

1. Whether the subject matter sought to be registered is a “common” basic shape or design;

2. Whether the subject matter sought to be registered is unique or unusual in a particular field;

3. Whether the subject matter sought to be registered is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or

4. Whether the subject matter sought to be registered is capable of creating a commercial impression distinct from the accompanying words.

The Board observed that the Examining Attorney "placed too much attention on the round bowl shape to the exclusion of the other elements of the proposed mark, particularly the inverted nature and lacquered finish."

the subject matter sought to be registered is more than just a round shaped bowl with minor refinements. The proposed mark engenders the commercial impression of a serving platter and cover holding a gourmet meal for a pet.

The Board concluded that the PTO's evidence fell short of establishing a prima facie case that Applicant's packaging configuration is not inherently distinctive.

TTABlog comment: Applicant already owns a registration for the packaging design shown below, which registration issued without a showing of 2(f) acquired distinctiveness. Curiously, however, that registration played no role in this decision. Why didn't Applicant rely on it as at least some proof of the inherent distinctiveness of the subject design?


Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Is This "HOT SPRINGS NATIONAL PARK ARKANSAS" Logo Primarily Geographically Descriptive?

The National Park Service petitioned for cancellation of a registration for the mark shown below [HOT SPRINGS NATIONAL PARK ARKANSAS disclaimed] for "creating advertising for publications or direct mail advertising; cooperative advertising and marketing; displaying advertisements for others; and dissemination of advertising for others,” on the ground that the mark is primarily geographically descriptive under Section 2(e)(2). Registrant conceded that Hot Springs National Park is a geographically descriptive term, and the addition of Arkansas does not help. But what about this logo form? National Park Service v. Hot Springs Advertising & Promotion Commission, Cancellation No. 92049191 (May 25, 2011) [not precedential].


The issue, said the Board, was "whether the primary significance of the mark, as a whole, is a generally known geographic location." There was no evidence addressing the significance of the design element.

Petitioner relied on In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001), in which the mark shown below was held to be primarily geographically deceptively misdescriptive, despite the inclusion of a design element.

However, the Board observed, the image of a winged Lion of St. Mark in that case "was recognized as a symbol of the city of Venice, Italy, and thus reinforced the geographic significance of the wording SAVE VENICE and THE VENICE COLLECTION in the mark at issue." Here, "the abstract design has no recognized significance and, as such, does not reinforce the geographically descriptive wording HOT SPRINGS NATIONAL PARK ARKANSAS."

The Board concluded that Petitioner had failed to prove the first element of the Section 2(e)(2) test - that the mark as a whole is the name of a place known to the public - and so it denied the petition for cancellation.

TTAB comment: I enjoy seeing government agencies lose because I think, based on experience, that they have an unfair advantage: a bottomless pocket. They are usually represented by an attorney from, for example, the Department of Justice at effectively no cost.

What about a Section 2(a) false association claim? Petitioner's petition for cancellation (here) is so poorly constructed and badly worded that it's difficult to discern what it claimed originally, but it pursued only the 2(e)(2) claim.

Text Copyright John L. Welch 2011.

Parties Choose ACR, TTAB Finds SOLARIN Not Confusingly Similar to SOLARCAINE for Sun/Tanning Products

The parties opted for the Board's Accelerated Case Resolution (ACR) procedure in lieu of trial, in this Section 2(d) opposition to registration of the mark SOLARIN for "self-tanning preparations." Opposer alleged likelihood of confusion with its registered mark SOLARCAINE for medicinal sunburn preparations and moisturizing skin lotion. In a mere eight pages, the Board dismissed the opposition, finding the marks "simply too dissimilar to support a finding of likelihood of confusion." Schering-Plough HealthCare Products, Inc. v. Western Holdings, LLC, Opposition No. 91187375 (April 25, 2011) [not precedential].


The parties filed a stipulation (here) setting forth their agreement on ACR discovery, procedural and evidentiary submissions, and briefing. The evidence comprised notices of reliance and testimonial declarations.

Applicant submitted 19 third-party registrations for marks incorporating the word "solar" in connection with products related to sun exposure. Third-party registrations may be considered "in the same manner as a dictionary to show a possible meaning or significance of the word." The Board found that "solar" is highly suggestive for the involved products, and therefore the appearance of "solar" in each mark "is an insufficient basis in which to predicate a holding that the marks are similar, especially considering the different suffixes of each mark."

We find, having given due consideration to the fame of opposer's mark, and notwithstanding all the other factors in opposer's favor including the similarity of the goods, channels of trade and classes of consumers, that the marks in this case are simply too dissimilar to support a finding of likelihood of confusion.

And so the Board dismissed the opposition.

TTABlog comment: Are the goods that similar? Can one get a sunburn from a self-tanning preparation?

And what about the fame of Opposer's mark? That certainly got short shrift - or no shrift at all.

Anyway, make note of this case because you may want to borrow the form of the stipulations if you ever proceed via ACR.

Text Copyright John L. Welch 2011.

Differences in Financial Goods/Services, Sophistication of Customers Lead TTAB to Reverse 2(d) HOMER Refusal

Despite the identity of the involved marks, the Board reversed a Section 2(d) refusal to register the mark HOMER for financial engineering software and services for institutions, accredited investors, governments, hedge funds, and bankers, finding it not likely to cause confusion with the same mark registered for "savings and loan financial services." In re Barkley International Incorporated, Serial No. 77311059 (May 4, 2011) [not precedential].


Actually, the Examining Attorney cited three registered marks for savings and loan services: one for HOMER, one for HOMER'S CLUB, and one for a design form of HOMER'S CLUB. The Board focused on the mark HOMER, since a finding of no likelihood of confusion with that mark perforce means that the other two cited marks are not confusingly similar.

The Examining Attorney argued that the involved goods and services are related “because they are financial in nature and involve potentially overlapping clients or markets.” She submitted third-party registrations purporting to show that consumers are familiar with entities offering these goods and services under the same mark.

The Board found that, although the third-party registrations contains “some of the wording” from Applicant’s identification of goods, none “contains the clear limitation present in applicant’s identification “for institutions, accredited investors, governments, hedge funds, and bankers.’” Accredited investors comprises a very specialized group, defined by the Securities Act of 1933.

“Accordingly, the third-party registrations, which do not include goods and services 'for institutions, accredited investors, governments, hedge funds, and bankers' are not availing to show similarity of the goods and services at issue in this case.”

The Board found that “Applicant’s identification, on its face, shows that applicant’s goods and services are different from, and would be marketed via distinct channels of trade from, those in the cited registration.”

"In this case, we note that applicant’s purchasers, i.e., its “highly sophisticated” investors are “high net worth institutions and accredited individuals.” (applicant’s brief at 14). Applicant requires these clients to be “accredited investors” under the Securities Act of 1933, as defined, supra. (Koziol decl. at ¶ 10). Under these circumstances, we find that the purchasers of applicant’s goods and services are extremely knowledgeable and careful in their purchasing decisions."

In sum, "applicant’s goods and services clearly are very expensive and would be bought
only by highly knowledgeable, discriminating and sophisticated purchasers after thorough deliberation." The Board therefore concluded that confusion is not likely.

TTABlog note: The cited registrations are owned by a bank called Home Savings Bank. "Homer" is a cartoon character used in advertising the bank. Do you think that fact had some influence on the Board's decision?

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability: Are GIFTERGO and GIFTANGO Confusingly Similar for Gift Card Services?

Applicant Phoenix filed three applications to register the mark GIFTERGO, one in standard character form and two in design form (the two designs are shown immediately below), for, inter alia, "online retail store services featuring downloadable gift cards." The Examining Attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark GIFTANGO for retail store services featuring gift cards. Given that the services overlap, how would you rule on this appeal? In re Phoenix Intangibles Holding Company, Serial Nos. 77732429, 77799403 and 77799400 (May 11, 2011) [not precedential].


The Board observed that the "retail store" services of the cited registration encompass both brick-and-mortar and online stores. Since the involved services are thus legally identical in part, the Board assumes that these services travel through the same channels of trade to the same, usual customers.

Of course, when the involved services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

Turning to the marks, Applicant submitted five registrations for marks containing the words "gifts" and "go," contending that the cited mark is weak. The Board, however, found those registration to be of minimal probative value because they were few in number and unaccompanied by any information regarding use of the marks. Moreover, the goods involved in four of the five registrations were not gift cards.

The Board first considered the standard character mark GIFTERGO: "Because GIFT and GO are actual words, consumers are likely to perceive both marks as the word GIFT separated by some letters from the word GO."

"The fact that the syllables separating the words differ between the two marks is less likely to be remembered and consumers are likely to perceive GIFT and GO as the dominant portions in each mark. The fact that 'an' in the registered mark may suggest 'and,' whereas 'er' in the application has no apparent meaning is of little significance. Rather, the commercial impression of the marks is substantially similar."

As to the first design mark, the Board found the design element insufficient to distinguish the marks. The darker font for the word GO merely emphasizes a word that appears in both marks.

The third application adds color and the house mark GIANT EAGLE, but the differing colors between GIFTER and GO "serves primarily to emphasize and distinguish the word GO which is, again, identical to the same portion in the registered mark." The addition of the house mark in smaller font is unlikely to distinguish the marks.

"In fact, when, as in this case, marks are otherwise substantially similar, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source."

Resolving any doubts in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog comment: The registered mark looks like GIFT TANGO to me, but then I've needed new glasses for a while. Not new frames, just new lenses. The frames are my trademark. Or service mark?

Text Copyright John L. Welch 2011.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of ATHEROABZYME for Diagnostic Test Kits

Examining Attorney Myriah A. Habeeb refused registration of the mark ATHEROABZYME under Section 2(e)(1), finding it merely descriptive of diagnostic testing materials for atherosclerotic conditions. Dictionary definitions, Applicant’s own patent application, Applicant’s website, and third-party webpages showed that ATHEROABZYME “describes a class of antibody, or at least an antibody that is present in atherogenic conditions,” and that Applicant’s goods test for those antibodies. Faced with this evidence, Would You Have Appealed? In re Cambridge Theranostics Limited, Serial No. 79049471 (May 10, 2011) [not precedential].


The Board found that "Athero-" is a recognized prefix in the medical field that refers to “a medical condition marked by ‘an abnormal fatty deposit in an artery.’” “Abyzme” is an antibody that catalyzes lipid oxidation in the body. Applicant stated that its goods test for levels of abzymes in the blood, and that "a high level of abzyme activity in the sample" may indicate an atherogenic condition. Applicant’s patent application explained that Abyzme is a diagnostic marker for atherosclerosis, and refers repeatedly to "AtheroAbzyme" as indicating a type of abzyme. The Board concluded:

“Ultimately, the term ATHEROABZYME as a whole describes the function or use of applicant's testing materials, and it describes the goods more completely than either word alone. The medical professionals who would be the purchasers for applicant's diagnostic test would immediately understand that the goods test for the presence of an atherogenic condition, and more particularly, for the presence of the marker for this condition.”

Applicant feebly argued that the record did not show use of the mark for its exact goods, but the Board observed that “terms that describe the purpose or function of the goods may be merely descriptive of the goods under Section 2(e)(1).” Moreover, the fact that Applicant sometimes used the “TM” symbol with the mark does not change it into a non-descriptive term.

Applicant asserted that third-party use of the term was de minimis, but the Board pointed out that even if Applicant were the first and only user of the term, it would still be descriptive of the goods. Furthermore, the third-party users employ the term "atheroabzyme" generically to denote a particular type of antibody, and not to indicate the source of any goods.

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

TTABlog comment: Would I have appealed this one? Maybe. These decisions are often not as simple as they look in retrospect. But this was certainly going to be a difficult refusal to overcome.

Copyright John L. Welch 2011.

TTAB Affirms Mere Descriptiveness Refusal of JEWELRYSUPPLY.COM: No Tacking and Not Enough 2(f)

This applicant claimed acquired distinctiveness under Section 2(f) when it filed its application to register the mark JEWELRYSUPPLY.COM for jewelry supply services. The Board, however, found the 2(f) evidence insufficient and rejected Applicant's attempt to "tack on" the supposed distinctiveness of its registered logo mark shown immediately below, for jewelry parts [JEWELRY SUPPLY disclaimed]." In re Jewelry Supply Inc., Serial No. 77475181 (May 4, 2011) [not precedential].


By seeking registration under 2(f), Applicant conceded that the mark is merely descriptive. The sole issue, then, was acquired distinctiveness. [A genericness refusal had been withdrawn].

Based on the evidence submitted by Examining Attorney Laurie Mayes - comprising dictionary definitions of the constituent words and Internet excerpts showing third-party use of the term "JEWELRY SUPPLY," and third-party registrations with disclaimers of "JEWELRY" or "SUPPLY" - the Board found the term JEWELRY SUPPLY to be highly descriptive of Applicant's services. Since the ".com" portion adds no distinctiveness, the Board concluded that JEWELRYSUPPLY.COM is highly descriptive. Consequently, the burden of proof for distinctiveness was correspondingly heavier.

The Board refused to allow Applicant to "tack on" the distinctiveness of its prior registration for the mark shown above, because the marks are not legally equivalent: the applied-for mark does not contain a design element, and the prior mark does not contain ".com." The marks are "distinguishable" from each other and create "somewhat different commercial impressions." In short, they are not the same.

Applicant pointed to its use of the mark for more than five years, and to its sales and advertising figures, distribution of catalogs, and website visitors, but the Board found that evidence insufficient. There was no context for comparison of Applicant's figures with others in the jewelry industry. As to website visitors, it was not clear that the reflected unique visitors or repeat visits by the same individual.

And so the Board affirmed the refusal to register.

TTABlog comment: Applicant's "tacking" argument was extremely feeble, given the difference in the marks, the differences in the goods/services, and the admitted lack of distinctiveness of the disclaimed term JEWELRY SUPPLY in the registered mark. It seems obvious that the design element was the reason that Applicant got the registration.

Text Copyright John L. Welch 2011.

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

The USPTO refused registration of the mark EPIC MISSION for "distributorship services in the field of nutritional beverages," finding that Applicant's specimen did not http://www.blogger.com/img/blank.gifshow use of the applied-for mark in connection with the recited services. The specimen of use, a two-page brochure, is depicted below. How would you rule? In re Health Fusion Brands, Inc., Serial No. 77691724 (May 10, 2011) [not precedential].

(Left-click on each picture for larger view)


Implicit in the definition of "use in commerce" for a service mark, said the Board, is the requirement of "a direct association between the mark and the services, i.e., that the mark be used in such a manner that it would readily be perceived as identifying the source of the services."

Applicant pointed to its use of the "SM" symbol on the first page, and the appearance of its contact information on the second page. Not enough, said the Board.

"While the exact nature of applicant’s proffered services does not need to be specified in the specimen, there must be something which creates in the mind of the prospective purchaser an association between the mark and the service activity."

Here, the specimen of use contained "absolutely no reference" to the recited services. Moreover, it was not even clear that Applicant was distributing anything other than its own "RipTide" beverages: i.e., "it is not even clear from this record that applicant is engaged in distributorship services for the benefit of others."

And so the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Lanham Act.

TTABlog comment: Maybe this case should have been a WYHA? as well as a TYTJ-A?

Text Copyright John L. Welch 2011.

MC Marty Schwimmer Presides Over MEET THE BLOGGERS VII

Perhaps the worst photograph I have ever taken (or at least the worst in the last few weeks) shows Marty Schwimmer introducing the attending bloggers at last night's MEET THE BLOGGERS VII event in San Francisco. Some attendees said they were reminded of the balcony scene from Romeo and Juliet, but I think they may have had one too many. In vino veritas?


If you have any good photos from MTB VII, please send them to me.
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TTAB Affirms Refusal of the "Eddie Bauer Guarantee" for Failure to Function as a Service Mark

Finding that “the Eddie Bauer guarantee” does not function as a service mark to identify and distinguish Applicant’s catalog ordering services, retail store services and online retail store services, the Board affirmed a refusal to register under Sections 1, 2, 3, and 45, the standard character mark OUR GUARANTEE EVERY ITEM WE SELL WILL GIVE YOU COMPLETE SATISFACTION OR YOU MAY RETURN IT FOR A FULL REFUND. In re Eddie Bauer Licensing Services LLC, Serial No. 77585551 (May 2, 2011) [not precedential].


Bauer sought registration under Section 2(f), claiming continuous and substantially exclusive use since 1984. It submitted numerous examples of its use of the guarantee, as well as articles that reference the guarantee “to show that the public perceives the phrase as a service mark.”

Examining Attorney James T. Griffin argued that the guarantee is merely informational. He submitted “evidence of other online retailers using similar ‘satisfaction guaranteed’ wording.” Bauer countered with nine third-party registration for “guarantee” marks.

The Board observed that the critical question for determination is “the commercial impression in makes on the relevant public (i.e., whether it would be perceived as a mark or as an informational phrase).”

As to the articles submitted by Bauer, they are “not probative of consumer perceptions of the matter as a mark; rather, the articles show that business writers use the Eddie Bauer guarantee to illustrate what the writers perceive to be a successful customer satisfaction policy.”

Looking at the specimens of use, the Board found that the primary significance of the phrase is likely to be merely informational, as conveying Bauer’s guarantee policy. For example, the phrase appears in small print on the website, above the stylized Eddie Bauer signature in larger print. The signature would likely be perceived as “the service mark.” The guarantee would not be perceived any differently than the third-party guarantees submitted by the Examining Attorney.

Bauer’s third-party registration evidence was irrelevant, since the decisions made by Examining Attorneys to register those marks are not binding on the Board.

And so the Board affirmed the refusal to register.

TTABlog comment: Maybe E. Bauer should get a survey? What if you presented five "guarantees" to consumers and asked them if the phrases brought to mind any particular company? How do you think E. Bauer would fare?

What about copyright? Is there enough artistic content to merit copyright protection?

Text Copyright John L. Welch 2011.

New TTABlog Job Posting: Green Mountain Coffee Seeks Trademark Paralegal

Green Mountain Coffee is seeking a trademark paralegal for its office in Waterbury, Vermont. Please see details below:

Green Mountain Coffee Roasters, Inc., parent company of Keurig, Incorporated and a dynamic leader in the coffee industry, is seeking a knowledgeable and results-oriented Trademark Paralegal to join its growing Legal Department. The Trademark Paralegal will assist with the management of the Company’s global family of brands and related clearance, prosecution, and enforcement work. Specific responsibilities include:

• managing the Company’s trademark docketing database
• docketing trademark deadlines
• handling USPTO and TTAB electronic filing
• communicating with outside trademark counsel
• conducting preliminary trademark availability searches and investigations

For the complete job posting, please visit the career section of www.gmcr.com.

TTAB Dismisses Fraud-Based Opposition for Failure to Prove Intent to Deceive

The Board tossed out this fraud-based opposition to registration of the mark PLAN B JEANS for various clothing items. Opposers claimed that Applicant had admittedly not used the mark on all the goods at the time he filed his use-based application to register, and in fact has never used the mark on some of the goods. However, Opposers failed to prove one critical element of fraud: intent to deceive. Daniel Ryan Way and CMDW, Inc. v. Anthony R. Falwell, Opposition No. 91184128 (May 3, 2011) [not precedential].


Applicant Falwell filed an Answer admitting that his mark had not been used on all the goods, but also stating that he had “in no way” attempted to mislead the PTO or to commit fraud. However, he did not properly serve that answer and, after the Board notified him of the lack of proper service, his attorney submitted a new answer denying all the allegations in the notice of opposition.

Opposers moved for judgment on the pleadings, which the Board denied, characterizing the first filing as informal and the second as the operative pleading.

Turning to the issue of fraud, Opposers again relied on statements made by Applicant in his informal answer, but the Board pointed out that it had already ruled that this was not the operative pleading. In any case, even if the Board had considered the statements made in the informal answer, it still would not have found fraud.

"Although the statements in the June 4 filing can be read as indicating that applicant did not use the mark on all of the goods identified in the application, these statements are not sufficient to prove a necessary element of fraud, namely, intent. On the contrary, the statements are replete with applicant's assertions that there was no attempt to mislead the USPTO."

The Board acknowledged Opposers' observation that "it would be hard to elicit direct evidence of intent, e.g., testimony that the applicant intended to deceive the USPTO, or papers containing such a statement," but it showed no sympathy for Opposers' plight.

Other evidence indicated that Applicant had ceased selling any of the goods since early 2006, but that evidence had nothing to do with whether Applicant committed fraud in his original filings.

And so the Board dismissed the opposition. However, it remanded the application to the Examining Attorney (under Rule 2.131) to consider whether a refusal should be made based on non-use for some of the goods, or whether some goods should be deleted.

TTABlog comment: Why didn’t Opposer allege non-use in the first place (as a sort of "plan B")? Probably because a finding of non-use would not knock out the entire application, but only the non-used goods, leaving Opposer’s application still blocked.

What about abandonment? It seems as though Opposer may have a claim for cancellation if and when the subject application ever moves to registration.

Text Copyright John L. Welch 2011.

Precedential No. 12: TTAB Issues Pre-Trial Order in New REDSKINS Disparagement Case

Following up on its Order of March 15, 2011 [TTABlogged here], the Board held a pre-trial conference on April 13, 2011 in the new REDSKINS disparagement case and issued another pre-trial order (here). Amanda Blackhorse, Marcus Briggs, Phillip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro Football, Inc., 98 USPQ2d 1633 (TTAB 2011) [precedential].


This new proceeding “mirrors” the Harjo case, in which 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. Here, "new" Native American petitioners seek to knock out the same six REDSKINS registrations on the ground of disparagement. The petitioners allegedly “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 Board stated that "it will be taking a more active role in pretrial management of cases that the Board identifies as having the potential to become overly contentious and/or involve creation by the parties of excessive records." While complimenting counsel on their "professionalism and spirit of collegiality," the Board warned against re-argument of issues already decided, over-designation of documents as confidential, and maintenance of unnecessary objections.

It required the parties to submit a detailed table of evidence and asked for further comment on certain issues of law, aiming toward “an agreement regarding the applicable law prior to trial.”

The Board was particularly concerned with one legal issue: Section 2(a) bars the registration of a mark that "consists of or comprises … matter which may disparage … or bring ... into contempt, or disrepute." However, the courts in Harjo left open the question of whether "disparage" and "contempt or disrepute" are to be determined under the same "guidelines."

The Board asked the parties whether they agree that the guidelines for the two aspects of Section 2(a) are the same, but Petitioners asked for time to think it over. And so the Board allowed Petitioners one week ...

"[t]o file notice of their position on the issue with the Board and, if necessary, to explain the differences between the elements of these claims, failing which the Board, as it did in Harjo, will use the same guidelines for determining whether a mark is disparaging and whether it brings persons or institutions into contempt or disrepute."

If Petitioners are unable to explain any differences between the elements of these two claims, "the Board will use the same guidelines as it did in Harjo."

Finally, the Board reviewed Pro Football's affirmative defenses and threw out 10 of twelve, including failure to state a claim, lack of standing (not an affirmative defense), equitable estoppel (overlaps with laches), lack of damage (actual damage not required), and several constitutional violations (not within TTAB’s jurisdiction).

Discovery is set to close at the end of June, and the testimony stage begins at the end of August.

TTABlog comment: Maybe I’m missing something, but why should the parties have to agree on the law? Isn't it up to the Board to "lay down the law" while the parties argue over the facts?

Text Copyright John L. Welch 2011.

Reminder: MEET THE BLOGGERS VII (BLOGFEST?) - Tuesday, May 17th, 8 PM

The best non-INTA event is on! MEET THE BLOGGERS VII (a/k/a BLOGFEST) will happen on Tuesday night, May 17th, 8pm, at Swig, 561 Geary Street, San Francisco. All invited.

Chicago, 2007

TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines

Finding that the term "heritage" has no definitive meaning in connection with grapes, the Board reversed a Section 2(e)(1) mere descriptiveness refusal of AMERICAN HERITAGE for wines [HERITAGE disclaimed]. The PTO's alternative refusal on the ground of Section 2(a) deceptiveness also went down the drain, since the Examining Attorney did not establish that AMERICAN HERITAGE describes a significant ingredient of wines and so could not be deceptive. In re Oliver Wine Co., Inc., Serial No. 77681936 (April 15, 2011)[not precedential].


The 2(e)(1) refusal was based on the Examining Attorney's "assumption" that a type of grape known as "heritage" grapes are a significant ingredient of Applicant Oliver's wine. The 2(a) deceptiveness refusal, in turn, was based on the alternative position that Oliver's wine does not "contain" heritage grapes. Consequently,

[w]hether “heritage” merely describes a significant ingredient in wines, i.e., a type of grape, is a threshold question with respect to both alternative refusals.

The Examining Attorney submitted dictionary definitions and a "substantial" amount of Internet evidence in arguing that "heritage" is a term of art "that refers to age, grape varietals and wines derived from grape varietals that are unique and of historic value to their region, and 'American' refers to the origin of the grape varietals or wines in the United States."

Oliver contended that "there is no consensus in the trade or among consumers as to the meaning of the term 'heritage' in connection with wine or grape varieties." Moreover, "American" is not geographically descriptive, said Oliver, but is arbitrary for wines.

The Board first noted that Applicant's disclaimer of "heritage" was not intended as a concession of descriptiveness, and the Examining Attorney did not treat it as such, since she submitted considerable evidence to show that "heritage" is descriptive. [Oliver asserted that its disclaimer was submitted to avoid an existing registration for HERITAGE, but the Board pointed out that a disclaimer does not avoid likelihood of confusion].

The Board ruled that there is no definitive meaning for "heritage" in connection with grapes.

"T]he evidence suggests that “heritage” is used in connection with various different grapes and, rather than clearly describing a particular grape varietal or wine, the connotation is varied. 'Heritage' is used variously in the evidence to refer to grapes that have been associated with a particular country or region; to refer to grapes that are from old-stock vines regardless of their origin; or to denote only those grape varietals grown from root stock indigenous to the United States."

At most, "heritage" suggests tradition in the context of AMERICAN HERITAGE for wines.

As to the word "American," the Board found that it suggests "a tradition that is quintessentially American in nature." The PTO did not assert that American is geographically descriptive, and there was inconclusive evidence that "American" is a wine appellation.

The Board concluded that AMERICAN HERITAGE for wines "suggest an American cultural tradition of wines, which could be understood, in turn, as an homage to the American wine industry." The mark is not merely descriptive of wines.

Since the PTO failed to establish that consumers would view AMERICAN HERITAGE as describing a significant ingredient of wines, "no matter what grapes are contained in applicant's wine the examining attorney cannot prevail on the Section 2(a) alternative ground of refusal.

And so the Board reversed both refusals.

TTABlog comment: I don't have any quarrels with this one, do you?

Text Copyright John L. Welch 2011.

New Job Posting: Under Armour Seeks IP Paralegal (Baltimore)

Under Armour, Inc. is seeking an IP paralegal for its office in Baltimore, Maryland. See announcement below.


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Senior Intellectual Property Legal & Docketing Assistant

Join the legal team at Under Armour as it strives to become the World’s #1 Performance Athletic Brand. If you want to feel truly passionate about your job and crave earning the opportunities that arise in a growth environment, then Under Armour could be your next home.

Duties and responsibilities include:

• File, docket, maintain, and monitor action due dates for patents and trademarks
• Assemble and electronically file patent and trademark applications
• Review all incoming correspondence from Patent & Trademark Offices worldwide
• Perform searches of patent and trademark databases
• Perform administrative duties as necessary

Candidates should have experience with electronic intellectual property docketing systems.

If you are interested in this opportunity, please visit our career page at www.underarmour.jobs, click on headquarters and then legal.

Test Your TTAB Judge-Ability: Are Flowers and Flower Pots Related Goods?

You can guess how this is going to come out, can't you? Third-party registrations will convince the Board that the goods are related? Sure enough, the Board affirmed a Section 2(d) refusal to register the mark EZ GRO for "living flowers and plants and plant seeds," finding the mark likely to cause confusion with the registered mark EEZY-GRO for "flower pots and planters." In re Gardenlife, Inc., Serial No. 77709903 (April 14, 2011) [not precedential].


The Board found the marks to be substantially similar in appearance, identical in sound, suggestive of the same idea, and highly similar in commercial impression. Not surprisingly, the first du Pont favored a finding of likely confusion.

As to the goods, they are complementary items commonly used together. The Board explained (for the completely stupid) its finding: "registrant's goods being vessels into which applicant's living plants and seed may be placed for the purpose of potting plants or creating container gardens."

Moreover, Examining Attorney Sally Shih submitted various third-party registrations "showing that a common mark has been registered by the same entity for both seeds and/or plants and flower pots and/or planters." Other third-party registrations showed that the same entity rendered retail store services and on-line services that featured both types of goods.

The Board concluded that the involved goods are "complementary and closely related, all being gardening items, which may be sold by the same source under the same mark."

The Board found that the respective goods would be sold in overlapping trade channels to ordinary consumers.

Finally, although the two marks are suggestive and somewhat weak, any doubt as to likelihood of confusion must be resolved in favor of the registered mark. Furthermore, even a weak mark is entitled to protection against a very similar mark for closely related goods.

And so the Board affirmed the Section 2(d) refusal.

TTABlog note: I almost put this in the WYHA? category. Would you WYHA?

The idea that, because goods are complementary, they are related for 2(d) purposes is one that I find puzzling. Coffee and sugar are complementary, but are they related? Beer and pretzels? Dogs and fireplugs?

Text Copyright John L. Welch 2011.

TTAB Decides "KUZ" Ownership Dispute: a Manufacture/Distributor Family Feud

At her Property, Intangible blog, Pam Chestek reports (here) on the Board's recent decision in de la Cruz Gonzalez v. The Youssef Mehanna and Susana de la Cruz Joint Venture, Cancellation No. 92048199 (April 22, 2011) [not precedential]. As Pam says, "it's a two-fer on the trademark ownership issue - a manufacturer-distributor dispute AND a family tiff," involving a petition for cancellation of a registration for the mark KUZ for "hair care preparations, namely shampoos, conditioners and hair dyeing preparations."

Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway

After an initial procedural skirmish concerning how to oppose a Section 66(a) Madrid Protocol request for extension of protection, the Board sustained the opposition to the mark SENSE AND SIMPLICITY for "electrical light dimmers, electrical circuit boards, printed circuit boards, electrical circuits for electrical conduction, printed circuits, electrical and controllers," in light of the mark SIMPLICITY for "electrical light dimmers and lighting control panels." Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011) [precedential]. [NB: The Board's decision on likelihood of confusion was reversed by the U.S. District Court for the District of New Jersey in August 2017 (Civil Action No. 11-3684)].


Madrid oppositions: An opposition to a "Madrid application" must be filed via ESTTA, and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed. ESTTA generates an opposition form that is automatically forwarded to WIPO.

Here, on the ESTTA electronic form Opposer Hunt listed six items in Applicant's class 9 list of goods, but argued that the scope of the opposition was broader because "in the supplementary explanation of the basis for the opposition that was attached to the ESTTA opposition form, opposer specifically recites the same six goods and adds to such recitation 'and related products in International Class 9' as constituting the objectionable goods."

The Board ruled that, for Madrid oppositions, the opposed goods must be limited to those identified on the ESTTA form, because that is the information transmitted to WIPO. Otherwise, the USPTO would not be in compliance with its obligations to WIPO.

On the other hand, the Board okayed Opposer Hunt's reliance on its common law rights for "electric light dimmers, lighting control panels and their related components." Applicant objected to the "related components" language as too indefinite, but the Board disagreed.

Finally, the Board ruled that Hunt could not rely on a federal registration for its mark because it was not the named owner of the registration. The registration is owned by a holding company for Opposer Hunt, a separate legal entity.

Likelihood of confusion: Applicant conceded that Hunt has prior common law rights in the SIMPLICITY mark. The Board found the involved goods to be, in part, legally identical, and therefore that they presumably travel through the same trade channels to the same classes of purchasers. As to the sophistication of purchasers, the goods include items purchased by individual homeowners at the retail store level, and those purchasers will exercise only an ordinary amount of care.

Turning to the marks, the Board found that [t]he obvious similarity in appearance and sound between the parties' marks stems from the fact that applicant's proposed mark, SENSE AND SIMPLICITY, incorporates opposer's previously used and registered mark SIMPLICITY, in its entirety."

Philips contended that SIMPLICITY is "highly suggestive, laudatory, and weak and thus is only entitled to a narrow scope of protection." The Board agreed that the numerous registrations for marks containing SIMPLICITY or SIMPLE, and the parties' own use of the word "simple," weakens the scope of protection for Hunt's mark. However this suggestiveness "is not fatal to the likelihood of confusion ground" because "even weak marks are entitled to protection against confusion."

Philips further contended that the word SENSE is the dominant portion of its mark, since it appears first and is "ambiguous" in meaning. The Board, however, did not find any ambiguity: "we believe that consumers are likely to understand 'sense' as being suggestive of the products' practicality in that the goods 'make sense.'"

"Bearing in mind the suggestiveness of the terms 'simplicity' and 'sense,' the overall commercial impressions or connotations created by the marks in their entireties are not so different. Opposer's mark connotes goods possessing simple-construction or an easy-to-use quality; applicant's mark shares the same connotation with the additional connotation that the goods 'make sense' or are practical in nature.

Finally, the Board rejected Applicant's suggestion that SENSE AND SIMPLICITY is "a unitary mark that creates a strong and distinctive commercial impression." It found no altered connotation arising from the combination of the two words.

And so the Board found that this du Pont factor favored Opposer Hunt.

Concluding that confusion is likely, and resolving any doubts against Applicant, the Board sustained the opposition.

TTABlog comments: SENSE AND SIMPLICITY reminds me of SENSE AND SENSIBILITY. So I think Applicant's mark is unitary; but that's just me.

I'm troubled by the Board resolving any doubts against Applicant when Opposer has no federal registration. Since Opposer has the burden of proof on likelihood of confusion, shouldn't Applicant get the benefit of the doubt?

Text Copyright John L. Welch 2011.

TTAB Manual of Procedure [TBMP] (3rd Edition) Now Available in .pdf Form

The Trademark Board Manual of Procedure (TBMP), Third Edition (May 2011), is now available in .pdf form (here) at the TTAB website. This edition "incorporates all case law, statutory changes, and changes to the Trademark Rules of Practice and Federal Rules where applicable as of November 15, 2010."

Another Test of Your TTAB Judge-Ability: Are CLOUDBANKS and FOGBANK Confusingly Similar for Wine?

Let's see how you weather this TTAB storm: Fast Forward opposed Houdini's application to register the mark CLOUDBANKS for wine, on the ground of likelihood of confusion with the registered mark FOGBANK for wine. Keep in mind that, when the goods are identical, a lesser degree of similarity in the marks is needed to support a finding of likely confusion. How would you rule? Fast Forward Brands, LLC v. Houdini, Inc., Opposition No. 91188001 (April 22, 2011) [not precedential].


The record included dictionary definitions of "fog," "cloud," and "bank." Applicant Houdini submitted so-called "negative" dictionary evidence: i.e., pages from two dictionaries in which the term "cloudbanks" is not listed. Opposer offered twelve excerpts from printed publications, showing that "fog" and "cloud" and "fogbank" and "cloudbank" are sometimes used interchangeably and have similar or the same connotations and commercial impressions.

The Board acknowledged that FOGBANK and CLOUDBANKS "are somewhat different in appearance and sound." It noted that the meaning of the words "fog" and "cloud" forms the "heart" of opposer's case, and recognized that there is a difference in "technical meaning" between the words.

"However, we are primarily concerned with the meaning of the marks to the prospective purchasing public (in this case, ordinary consumers of wine), and not to meteorologists. ***[W]e believe that the popular or ordinary meanings of the words 'fog' and 'cloud' (and 'fogbank' and 'cloudbanks') are very similar, although there are technical distinctions between the two words. The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in meteorological terms."

And so the Board ruled that "the substantially similar meaning between 'fog' and 'cloud,' and 'fogbank' and 'cloudbanks,' outweighs any differences in appearance and sound."

Giving the prior registrant the benefit of any doubt, the Board sustained the opposition.

TTABlog query: In the photographs below, which is the fogbank and which is the cloudbank? Or are they both both?



Text Copyright John L. Welch 2011; Photographs Copyright John L. Welch 2010.

WYHO? TTAB Finds BRAIN FUEL for Fresh Fruit Not Confusingly Similar to BRAINFUEL for Dietary Supplements

The Board dismissed this Section 2(d) opposition to registration of the mark BRAIN FUEL for "fresh fruit," finding it not likely to cause confusion with the mark BRAINFUEL for "dietary supplement to enhance mental performance." It ruled that "the differences between the goods, coupled with the suggestiveness of the marks" made confusion unlikely. So the question is, Would You Have Opposed? Learning Annex, LLC v. Chiquita Brands LLC, Opposition No. 91171133 (April 13, 2011) [not precedential].


The Board found that Learning Annex had standing to oppose because it relied on its earlier-filed ITU application "and, further, opposer has shown that it is not a mere intermeddler." Opposer's earlier-filed application also gave it priority.

The marks: The Board, not surprisingly, ruled that the marks "engender essentially identical overall commercial impressions." Applicant did not dispute this point.

The goods: The Board noted once again that, when identical marks are involved, a lesser degree of similarity between the goods is required to support a finding of likely confusion.

According to Opposer, the products are related because both "are ingested by human beings." Moreover, Opposer's products "will be based on fruits and vegetables that can enhance your brain."

The Board, however, held that Opposer had "failed to show, by a preponderance of the evidence, that there is even a 'viable' relationship between fresh fruit and dietary supplements."

The fact that the parties’ goods both may be ingested is hardly a basis, in and [of] itself, for a finding that the goods are related. The goods are specifically different; opposer’s proposed product is a manufactured supplement, whereas applicant’s product is a whole food product.

The record was devoid of any evidence corroborating Opposer's assertion that dietary supplements are related to fresh fruit, or that the public would make that association. And so the du Pont factor regarding the relatedness of the goods favored Applicant.

Trade channels and purchasers: The involved goods move through grocery stores, supermarkets, and health food stores, albeit in different sections of the stores. The classes of purchasers would be the same, and they would exercise only ordinary care. The Board found this factor to weigh in Opposer's favor.

Conclusion: The Board saw Opposer's claim "as amounting to only a speculative, theoretical possibility," and it dismissed the opposition.

TTABlog note: This opposition was commenced in 2005. In 2009, the Board denied Applicant's motion for summary judgment in a terse order (here), finding that genuine issues of fact existed "at least with respect to the channels of trade and the relatedness of the respective goods."

Text Copyright John L. Welch 2011.

Mark Your Calendar: MEET THE BLOGGERS VII - BLOGFEST - Tuesday, May 17th, 8 PM

It's on! MEET THE BLOGGERS VII (a/k/a BLOGFEST) will happen on Tuesday night, May 17th, 8pm, at Swig, 561 Geary Street, San Francisco. Be there or be square!

MEET THE BLOGGERS I, San Diego, May 2005Click on photo for larger picture

Test Your TTAB Judge-Ability: Are "ITOWNS" and "IVILLAGE" Confusingly Similar for Related News Services?

Managing Attorney Chris Doninger refused registration of the mark ITOWNS, in standard character form, for general circulation newspapers and related websites, finding it likely to cause confusion with the registered mark IVILLAGE for newsletters and websites concerning various issues, including health, astrology, and fitness. The services overlapped, but are the marks too close? In re The Hartford Courant Company, Serial No. 77404276 (April 22, 2011) [not precedential].


The Board found the involved goods to be related, noting that Applicant's newspaper is not limited as to subject matter and presumably encompasses the specific topics listed in the cited registrations. The involved services are similarly related.

"[A]applicant’s goods and services are broadly identified, with no restriction as to topics and issues covered, so we must presume that applicant’s website covers topics of interest to women, children and families, such as parenting, fitness, diet and careers. The fact that applicant’s goods and services may feature information of particular importance to the Hartford, Connecticut metropolitan area is irrelevant because no such limitation is indicated in applicant’s identifications."

Third-party websites and registrations confirmed the relatedness of the goods and services. The Board therefore presumed that the goods and services travel in the same channels of trade to the same classes of purchasers. Those purchasers would include ordinary consumers exercising only ordinary care.


Turning to the marks, Managing Attorney Doninger relied on numerous documents, including thesaurus listings, NEXIS articles, excerpts from the parties' websites, and third-party websites and registrations, in urging that "the ordinary meaning and usage of the terms 'village' and 'town' are so close as to create confusion in the minds of consumers, who clearly are not experts in the technicalities of the definitions of municipalities, nor do they care about such things when surfing the internet for information about current events, politics, horoscopes or fashion."

The Board recognized that the words TOWNS and VILLAGE neither sound nor look alike, but it ruled that their "similarity or identity" in meaning outweighed the differences so that the marks as a whole are similar in commercial impression.

The Board acknowledged that "there may be a distinction between the technical meanings of the two words 'village' and 'towns,'" but pointed out that it is "primarily concerned with the meaning of the marks to the prospective purchasing public (in this case, ordinary consumers), and not to geographers, experts on municipality designations, or linguists."

"Accordingly, as shown by the thesaurus entries, and confirmed by the interchangeability of the words in actual language, we believe that the popular or ordinary meanings of the words 'village' and 'towns' are virtually identical, although there are technical distinctions between the two words. The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in the definitions of municipalities."

And so the Board concluded that the "substantially similar meaning between 'village' and 'towns' outweighs any difference in sound and appearance." The letter "I" at the beginning of each mark indicates "Internet," and the marks "engender overall commercial impressions that are similar."

It therefore affirmed the refusal to register.

TTABlog comment: Several decades ago, I suggested to a law student working at my firm in Boston, that a good place to start in trademark law would be as an Examining Attorney at the USPTO. I'm happy to report that Chris Doninger took my advice.

Here, the Board panel stated its appreciation for Managing Attorney Doninger's thorough and organized effort in presenting the PTO's evidence. It's good to see the Board commend an Examining Attorney for a change.

Text Copyright John L. Welch 2011.

TTAB Reverses 2(d) Refusal of FUJITECH: Third-Party Registrations Insufficient to Show Relatedness of Various Electronic Goods

The Board reversed Section 2(d) refusals to register the mark FUJITECH in standard character and stylized form (shown below), for various electronic goods, finding the mark not likely to cause confusion with the marks of seven different registrations, owned by two different companies, consisting of or including the word FUJI for various electronic goods. In re Fujitech Ltd., Serial Nos. 77270424 and 77270426 (March 31, 2011) [not precedential].


The Board did not appreciate the Examining Attorney's "very minimalist approach in her argument and presentation of evidence" regarding the relatedness of the goods.

In light of the fact that seven different registrations owned by two different entities have been cited in support of the likelihood of confusion refusal to registration, it was incumbent upon her to explain, at the very least, which goods from each registration were most likely to support the refusal.

The Examining Attorney relied exclusively on the printouts of 44 third-party registrations, but more than one-third were based on Section 44(e) and not on use, and therefore had no probative value.

Moreover, the Examiner Attorney presented printouts of the third-party registrations, with "no attempt ... to spell out the goods in the third-party registrations that are relevant to showing a relationship between applicant’s goods vis-à-vis any of the goods listed in the seven different registrations."


The Board found that the use-based registrations did include at least one item from Applicant's identification of goods and one from a cited registration, but there was "not a significant number of registrations covering the same specific item in the applications and the same specific item found in any one of the seven different registrations."

In sum, the third-party registrations are not sufficiently convincing of the relatedness of the goods. In particular, there are too few showing the relatedness of any specific item in the application with an item in a given cited registration. Furthermore, it would be too tenuous of a connection for us to somehow consider all of the registrations conjunctively for purposes of showing that all or certain of the goods of applicant’s and any one of the registrant’s are related.

And so the Board ruled that the Examining Attorney had failed to make a prima facie case, and it reversed the refusal.

TTABlog comment: Underscoring the point, the Board noted that "on a different record, such as might be adduced by a competitor in an opposition proceeding, a different result may be reached on the issue of the relatedness of the goods." On must wonder, will Fuji erupt?

Text Copyright John L. Welch 2011.

TTAB Posts May 2011 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of May, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.


May 10, 2011 - 2 PM: PerkinElmer Health Sciences , Inc. v. Atlas Database Software Corp., Cancellation No. 92046554 [Petition for cancellation of a registration for the mark LABWORKS for software and services relating to "medical records, patient information, clinical histories, clinical task workflow, radiology and laboratory test ordering and results reporting, and providing remote access to the foregoing between users," in view of the identical mark allegedly previously used for goods and services concerning laboratory test ordering and results reporting].


May 11, 2011 - 11 AM: In re Fire Island Brewing Company, LLC, Serial Nos. 77696816 and 77696805 [Refusals based on Applicant's failure to disclaim FIRE ISLAND in the word mark FIRE ISLAND BEER COMPANY LIGHTHOUSE ALE and the logo mark shown below, for "ale; beer"].


May 19, 2011 - 10 AM: In re PBM Products, LLC , Serial No. 77677746 [Section 2(e)(1) mere descriptiveness refusal of COLIC RELIEF for infant formula].


May 31, 2011 - 11 AM: In re Johnson Controls, Inc., Serial No. 77612039 [Refusal to register, under Sections 1, 2, and 45, the product configuration shown below for "electromechanical temperature control device for HVAC systems," on the ground that the proposed mark lacks acquired distinctiveness].


May 31, 2011 - 2 PM: Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, Cancellation No. 92046786 [Petition for cancellation of registrations for SWISS and SWISS MADE as certification marks for watches, clocks, and their component parts and fittings, on various grounds, including abandonment, fraud, and improper use of the marks, and failure to comply with statutory provisions governing certification marks].


Text Copyright John L. Welch 2011./