Thursday, June 30, 2011

TTABlog Quarterly Index: April - June 2011

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Section 2(a) - deceptiveness:

Section 2(d) - likelihood of confusion:

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

Section 2(e)(2) - Primarily Geographically Descriptive:

Section 2(f) - Acquired distinctiveness:


Dilution:

Failure to function:

Fraud:

Genericness:

Lack of Bona Fide Intent:

Ownership:

Procedural issues:


Res Judicata:

Specimen of use/Use in commerce:

CAFC Oral Arguments/Decisions:

Recommended Reading:

Other:

Text and photographs © John L. Welch 2011.

posted by John L. Welch @ 6/30/2011   0 comments

Wednesday, June 29, 2011

SOLARWINDOW Merely Descriptive of Solar Energy Devices, Says TTAB

Dictionary definitions, Internet evidence, and Applicant's own website convinced the Board that the mark SOLARWINDOW is merely descriptive of solar-powered electricity generators, photovoltaic cladding panels and solar hybrid modules, photovoltaic cells, and insulation substrates for solar devices. Applicant unsuccessfully argued that its goods are not "solar windows," that the words "solar" and "window" have multiple meanings, and that it uses the term as a trademark accompanied by the "TM" symbol. In re Kinetic Energy Corporation, Serial No. 77738793 (June 2, 2011) [not precedential].


Examining Attorney Kaelie E. Kung contended that "solar window(s)” is a "commonly descriptive term for windows that use special technology, devices and equipment to convert solar energy into thermal or electrical energy." The Board found the dictionary and website evidence "highly persuasive."

Not only does each element have descriptive significance as shown by the dictionary definitions, but the record establishes that the combination “SOLAR WINDOW” is used in the solar energy industry to describe solar energy-generating and/or solar energy-converting technology used in connection with windows.

Moreover, Applicant uses the term "solar window" at its website "in a descriptive manner when it states that solar cells and films are used 'to produce a transparent solar window.'"

The Board found nothing incongruous in the combination of two words; rather, the descriptive significance of the term would be readily apparent to consumers. The fact that the individual words have various meanings is irrelevant, since the mark must be considered in the context of the goods, not in the abstract. And even if Applicant were the first and only user of the term, that would not avoid a Section 2(e)(1) mere descriptiveness ruling.

And so the Board affirmed the refusal.

TTABlog comment: In light of Applicant's own website evidence, would you put this case in the WYHA? category?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/29/2011   3 comments

Tuesday, June 28, 2011

Test Your TTAB Judge-Ability: Is MOTIONPOWER Merely Descriptive of Electrical Generation?

The USPTO refused registration of the mark MOTIONPOWER for electricity generators and power generation services, on the ground of mere descriptiveness under Section 2(e)(1). The Examining Attorney relied on dictionary definitions of the constituent words, and of "kinetic energy power." Applicant argued that its mark is merely suggestive and that no other entity in its industry uses the term or has a need to do so. In re Kinetic Energy Corporation, Serial No. 77707733 (May 31, 2011) [not precedential].


Applicant's website and press releases indicated that its goods and services relate to the generation of power from the motion of vehicles. Applicant points out that moving vehicles possess kinetic energy, which can be converted into electricity. The website compares applicant’s technology with other sources of energy, including “wind power,” “solar power,” “hydro power” and “geothermal power.”

The Board concluded that the mark is merely descriptive:

The evidence shows that kinetic energy, the type of energy involved in applicant’s goods and services, is energy associated with motion. The evidence also shows use of terms such as “solar power” (generation of power from the sun), “wind power” (generation of power from the wind) and “hydro power” (generation of power from water). The construction of applicant’s term MOTIONPOWER is similar, and consumers are likely to perceive applicant’s designation as merely descriptive when used in connection with goods or services that feature the generation of power from motion.

Of course, whether Applicant is the first or only user of the term does not affect the Section 2(e)(1) mere descriptiveness determination.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/28/2011   7 comments

Monday, June 27, 2011

New Orleans Snowball Fight Rages On: SnoWizard Seeks Review of TTAB Mere Descriptiveness Rulings

In the latest chapter of this modern day Battle of New Orleans, SnoWizard has filed a complaint seeking Section 1071(b) review by way of civil action of two Board decisions. [See last TTABlog posting here]. The Board affirmed two Section 2(e)(1) rulings, finding CAJUN RED HOT, Serial No. 77472649, merely descriptive of "flavoring concentrate for non-nutritional purposes, namely, flavoring concentrate for shaved ice confections," and WHITE CHOCOLATE & CHIPS, Serial No. 77471425, merely descriptive of "food flavorings." SnoWizard Inc. v. Kappos, Civil Action No. 11-0880 (E.D. La.). [Complaint here].


Not wanting to be left out in the cold, Southern Snow Manufacturing Co. has moved to intervene. [Memorandum in Support here]. Southern Snow asserts that it has a right to intervene under Rule 24 FRCP because the court's decision in this action may affect already-pending litigation between the parties.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/27/2011   0 comments

Friday, June 24, 2011

WYHA? TTAB Affirms Trifusal of NATIONAL QUICK SALE for Real Estate Services

In this long yet enervating decision, the Board affirmed three refusals to register the mark NATIONAL QUICK SALE in standard character form, and two more refusals [a bifusal?] for the same phrase in the design form shown below, for various real estate services, including "mortgage foreclosure mitigation and loan default mitigation services," and "facilitating and arranging for real estate procurement for others." It found the standard character mark to be merely descriptive of the services and likely to cause confusion with two registered marks, and it found the logo mark unregistrable without a disclaimer of the phrase and likely to cause confusion with one of the registered marks. Got that? Would you have appealed? In re National Real Estate Solutions, Inc., Serial Nos. 77722235 and 777222561 (June 17, 2011) [not precedential].


Mere Descriptiveness: Examining Attorney Cory Boone submitted dictionary definitions of "national," "quick," and "sale," and Internet evidence of the use of "quick sale" to refer to a fast sale of real estate. Applicant feebly argued that "quick sale" is subject to an "unlimited number of interpretations," because it does not tell what item is being sold. Of course, that argument is a loser because the mark must be considered in the context of the involved services, not in the abstract. In other words, mere descriptiveness is not a guessing game.

Applicant's assertion that it did not intend to adopt a descriptive mark was obviously irrelevant, since there is no intent requirement for mere descriptiveness under Section 2(e)(1).

The Board concluded that the phrase "NATIONAL QUICK SALE" is merely descriptive of Applicant's services, and so Applicant's standard character mark was refused under Section 2(e)(1), and its design mark was refused for failure to disclaim that phrase.

Likelihood of Confusion: The Board found the standard character mark likely to cause confusion with two registered marks: QUICK$ALE for mortgage banking (on the Supplemental Register), and A QUICK SALE for real estate agency services, financial valuation of real property, and other real estate services.

With regard to the second cited mark, the Board found that the services overlap and would be offered in the same channels of trade to the same classes of consumers. As to the first, the services differ from Applicant's services, but both involve the financing of real estate. The Board found that "persons encountering the services under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources."

Comparing the marks, even though A QUICK SALE is registered on the Supplemental Register and its scope is weak, it is still entitled to protection. The Board found the standard character mark NATIONAL QUICK SALE to be confusingly similar to this mark, but not Applicant's logo mark: [W]e find applicant's design combined with the additional wording NATIONAL sufficiently remarkable and significant to distinguish applicant's mark from registrant's merely descriptive mark on the Supplemental Register."

Turning to the cited QUICK$ALE registration, the Board concluded that the mark would be pronounced as "quick sale," without verbalizing the dollar sign. The appearances of the applied-for marks and this registered mark are similar, as are their meanings and commercial impressions. And so the Board affirmed both Section 2(d) refusals based on this registration.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/24/2011   1 comments

Thursday, June 23, 2011

INTA and ABA Sections Comment on Proposed TTAB Involvement in Settlement Discussions

INTA and the IP and ADR Sections of the ABA have submitted their comments on the issue of the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings."


INTA comments here: It is INTA's view that "TTAB participation in the settlement process should be limited to instances where there is a willingness by both parties to participate." It does not recommend "formal triggers that would create an affirmative obligation for the TTAB to take action."

ABA Sections comments here: The two Sections support the Board's "present, limited involvement in settlement discussions" and are "not of the view that the Board needs to take a more active mandatory role." They recommend Board involvement only if the parties agree, if the Board participants are properly trained, and if the Board personnel are recused from making rulings in the case.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/23/2011   0 comments

Wednesday, June 22, 2011

More Comments on TTAB Settlement Involvement: AIPLA, IPO, and John Farmer

AIPLA, IPO, and former TPAC Chairman John B. Farmer have submitted letters in response to the USPTO's Notice (here) requesting comments on the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings." [TTABlogged here]. Paul Reidl's comments were posted here yesterday.


AIPLA comments here: Based on a survey of its Trademark Law Committee members, the majority view is that "The Board should be involved in settlement discussions only on an 'as needed basis' by stipulation of both parties." The parties "already devote time and resources to settlement discussions," and involvement of the Board "would likely delay action on the case."

IPO comments here: In a brief letter, IPO states its belief that the TTAB "should not become more directly involved in settlement discussions." Most cases settle anyway, and so any Board involvement in settlement would be applicable only to "a very small percentage of proceedings, and IPO does not believe that a policy of increased Board involvement would necessarily benefit that small percentage of proceedings."

John B. Farmer comments here: Mr. Farmer urges that settlement "intervention" be mandatory in all cases, occurring at specific junctures. His concern is that while the parties delay taking in action in cases, the public has an interest in having disputes over registration issues resolved expediently.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/22/2011   1 comments

NORTH AMERICAN RANGE Primarily Geographically Descriptive of Beef, Says TTAB

Finding that the term "North American Range" refers to "a large area of land in North America where cows of other animals may be kept for the production of beef," the Board affirmed a refusal to register the mark NORTH AMERICAN RANGE for beef on the ground that the mark is primarily geographically descriptive of the goods. In re Laura's Lean Beef Company LLC, Serial No. 77712445 (June 8, 2011) [not precedential].


To support a Section 2(e)(2) refusal, the PTO must show that the mark's primary significance is a generally-known geographical location, and that the relevant public would likely believe that the goods came from that location (i.e., a goods/place association).

Examining Attorney James A. Rauen relied on dictionary definitions of "range" and "North America" and on Internet evidence showing use of the terms "range beef," "range beef cows," and "range cattle." However, he did not provide evidence that "North American Range" is a geographic location. Applicant asserted that "North American Range" is a "mystical location contrived by the Applicant."

Nonetheless, the Board found that the mark "combines a geographically descriptive term with a merely descriptive term," without creating any unique or incongruous meaning when used with beef. Guided by the Examining Attorney's proffered definitions, "it follows that the term 'North American Range' refers to a large area of land in North America where cows or other animals may be kept for the production of beef." This finding is bolstered by the evidence of use of the terms "range beef cattle," or "range beef cows," and discussion of the historical "range era."

The Board concluded that "North American Range" is primarily geographically descriptive of beef that comes from range beef cattle.

The Examining Attorney presumed a goods/place association because Applicant is located in Kentucky, which is in North America. Applicant argued that "North American Range" is obscure and "could conceivably be the source of a wide range of goods." But given the definitions of record, the Board found North American Range to be neither remote nor obscure. "Potential customers will view the mark as designating the entire North American region."

And so the Board found that the public is likely to believe that Applicant's beef originates in the place identified by the mark, and it affirmed the refusal to register.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/22/2011   3 comments

Tuesday, June 21, 2011

Paul Reidl Files Comments Re Proposal for TTAB Involvement in Settlement Discussions

Today is the deadline for filing comments concerning the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings." [TTABlogged here]. Paul W. Reidl, former INTA President and current trademark expert, filed his thoughtful comments yesterday. [pdf here]. Have you filed your comments?


Paul states: "Based on my [30 years of] experience, I do not believe that requiring Board involvement in settlement discussions at any stage of a proceeding would materially increase the likelihood of settlement nor would it be a good allocation of the Board’s scarce resources."

"For at least six reasons, it is doubtful that Board involvement would have a material impact on the settlement dynamics:
  1. There is no possibility of a damages or an attorneys’ fees award.
  2. There is no risk of making the Judge angry by being unreasonable.
  3. Telephone settlement conferences are useless, and the Board cannot compel the parties to appear in person.
  4. The Administrative Trademark Judges have expertise in the law of registration, but the law frequently is not the dispositive factor in settlement.
  5. There is no penalty to adopting a low cost “rope-a-dope” strategy in Board proceedings.
  6. Board proceedings are frequently proxies for a marketplace issue."

I agree with Paul. As I've said before, I think Board involvement in settlement discussions will only complicate matters with minimal beneficial effect.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/21/2011   0 comments

Test Your TTAB Judge-Ability: Which of these Three Section 2(d) Refusals Did the TTAB Reverse?

By my estimate, the Board affirms about 80% of the Section 2(d) refusals that it reviews. Here are three appeals from Section 2(d) refusals, two of which were affirmed by the Board, one was reversed. Let's see if you come up with the same results based on a quick look at the marks and goods/services involved. [See comments for answer].

In re NuVision U.S., Inc., Serial No. 77720572 (June 10, 2011) [not precedential]. Refusal to register the mark FLATSCREEN CONNOISEUR for "home theatre products, namely televisions, LCD televisions, plasma televisions, flat panel televisions and DVD players," in view of the registered mark CONNOISSEUR for "sound equipment, namely, loudspeakers."


In re F5 Networks, Inc., Serial No. 77816180 (June 8, 2011) [not precedential]. Refusal to register EDGE GATEWAY for goods identified as "computer networking hardware; computer software for use in enhancing, optimizing, securing, accelerating, monitoring, and managing computer network traffic and applications communicating across networks," over the registered mark GATEWAY for "computers and computer peripherals."


In re Sharecare Inc., Serial No. 77666496 (June 7, 2011) [not precedential]. Refusal to register SHARE CARE for "providing a wide range of information in traditional fields of health, healthcare, medical treatments, and medicine via a global computer network," in view of the registered mark SHARECARE for "courses of instruction in craniosacral therapy offered to individuals who have little or no prior knowledge of anatomy or physiology."


Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/21/2011   2 comments

Monday, June 20, 2011

Alpha Kitty Roars: Seeks District Court Review of TTAB Dismissal of 2(d) Opposition

Opposer Alpha Kitty/Boss Pussycat failed to get out of its carrying cage in its Section 2(d) opposition to registration of the mark ALPHA KITTY for sound recordings and entertainment services. It suffered a dismissal of its Section 2(d) opposition, even though the involved marks were identical and the goods and services overlapping because it failed to prove standing and priority. [TTABlogged here]. But Alpha Kitty is back with a civil action for review of the TTAB's decision, under 15 U.S.C. Sec. 1071(b). [Complaint here].


New counsel for Alpha Kitty will undoubtedly take advantage of the de novo aspect of this review procedure in order to establish standing and priority, and then we will hear Alpha Kitty roar!

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/20/2011   0 comments

Friday, June 17, 2011

Precedential No. 14: Applying Collateral Estoppel to the Ownership Issue, TTAB Enters Summary Judgment in "WINNIE THE POOH" Trademark Dispute

The Board granted Disney's summary judgment motion in this consolidated proceeding (eleven oppositions and one cancellation) involving trademark rights in various WINNIE THE POOH marks. It ruled that collateral estoppel barred SSI from re-litigating the issue of ownership, and that absent ownership, SSI's claims for likelihood of confusion, dilution, and fraud must fail. Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 98 USPQ2d 1890 (TTAB 2011) [precedential].


For a history of the litigation between these parties, see this Wikipedia entry. The subject TTAB case is a chapter in a long-running dispute concerning rights arising out of the works of A.A. Milne. This proceeding involves only the registrability of certain trademarks relating to those works.

The dispute centers around a 1983 agreement between the parties. SSI claimed that certain rights in the POOH works were reserved to it by the agreement, whereas Disney maintained that the agreement assigned all of SSI's ownership rights (including trademark rights) to Disney.

Here, Disney sought to register various marks for a variety of goods. SSI opposed on the grounds of likelihood of confusion, dilution, fraud, and lack of ownership. SSI also sought to cancel more than a dozen Disney registrations on the same grounds.

Disney moved to dismiss all of SSI's claims on the ground that SSI is collaterally estopped from re-litigating the issue of ownership of the marks because that issue was decided in a civil action between the parties in the U.S. District Court for the Central District of California in 2009.

SSI argued that the court did not actually decide the that issue, and further that any such determination was not necessary to the district court's judgment. It asserted that the court decided only whether Disney's uses were authorized, without having to reach the issue of whether there was an assignment or a mere license of the rights.

Disney contended that the issue of ownership was extensively briefed and was necessarily decided by the court in order to consider SSI's counterclaims for trademark infringement and for a declaratory judgment requiring the USPTO to correct the title of Disney's registrations.

Because both parties relied on documents outside of the pleadings, the Board treated Disney's motion to dismiss as a motion for summary judgment.

Four requirements must be met for issue preclusion to apply: (1) the issues must be identical in each case; (2) the issue must have been raised and adjudicated in the prior action; (3) the determination of the issue must have been necessary and essential to the prior judgment; and (4) the party precluded must have been fully represented in the prior case.

SSI must prove ownership here, since its claims are not based on its own federal registrations and it cannot rely on any presumption of validity. Even SSI's fraud claims are based on an alleged attempt by Disney to mislead the USPTO as to the correct ownership. In the district court, the action involved "the specific issue of which party owns the POOH marks as a result of the contracts between the parties."

There was also no dispute that the issue of ownership was raised and adjudicated in the court, and that SSI was fully represented by counsel.

Finally, as to the third factor, the Board was persuaded by the entire record that the district court's determination regarding "the nature and scope of the conveyance from SSI to Disney" was necessary and essential to the resulting judgment in the civil action."

[B]efore considering whether Disney's actions were infringing (or whether SI was entitled to have USPTO records regarding Disney's registrations corrected to show SSI as owner), the district court necessarily had to consider whether SSI had any rights in the POOH works. The question of whether Disney's uses were infringing or "authorized" is only relevant once SSI's rights are established.

And so the Board found no genuine dispute that the issue of ownership of the POOH marks to be determined here is identical to the issue raised and necessarily adjudicated n the district court. It therefore granted the motion for summary judgment.

TTABlog comment: I refuse to say that the Board pooh-poohed SSI's arguments.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/17/2011   0 comments

Thursday, June 16, 2011

TTAB Finds RADIO-INFO.COM to be Generic for ... Guess What?

Applying both the Gould [compound word] and American Fertility [phrase] analyses, the Board affirmed a genericness refusal of the term RADIO-INFO.COM for providing online news and information in the field of radio entertainment. It distinguished this case from those involving magazine titles, and rejected Applicant's argument that a "mixed record" precluded a finding of genericness. In re in3media, Inc., Serial No. 77171708 (June 1, 2011) [not precedential].


The Board found the genus of goods to be adequately defined by Applicant's recitation of services: roughly, online information services in the radio field. The relevant public includes people in the industry and the general public interested in radio broadcasting, personalities, and programming.

Examining Attorney Jason Paul Blair relied on dictionary definitions of "radio," "information," and "info," and on third-party websites using those terms in connection with the provision of information in the field of radio.

The Board found "radio-info" to be a compound term subject to the Gould analysis. The TLD ".com" does not present an "exceptional circumstance" that would require according it any trademark significance. In short, RADIO-INFO.COM is "no more than the sum of its parts." Moreover, to the extent that RADIO-INFO.COM could be considered a phrase rather than a compound term, it would be generic under the American Fertility analysis, since the evidence included use of RADIO-INFO and RADIO-INFORMATION as a whole.

Applicant pointed to the results of a survey conducted in an attempt to show acquired distinctiveness, but the Board found the survey lacking in probative value. The participants were limited to people already on Applicant's website, skewing the results. Moreover, it did not follow the accepted "Teflon" methodology. And, the Board noted, "consumers may automatically equate a domain name with a brand name."

Applicant next argued that cases dealing with magazine titles are analogous to this situation. The Board recognized that magazine title present a particular dilemma:

"unlike most goods whose appearance will convey their nature, periodicals must depend principally on their titles to convey their character [and c]ourts have been reluctant to find a magazine title generic, perhaps in part because the magazines in such cases were not literally the class title designated but were about that class."

However, "a domain name is an address, and when used as a trademark is not a title. Moreover, in this case, RADIO-INFO.COM, is the service, namely, online radio information." As the Examining Attorney argued: "[A] magazine is not the same thing as information itself. Applicant's service of providing information, however, is the same thing as the actual information itself." And so, the Board declined to extend the treatment of magazine titles to domain names.

Finally, contrary to Applicant's contention, the evidence did not present a "mixed record" sufficient to rebut the Examining Attorney's prima facie case.

In sum, the Board was satisfied that the evidence fell within "the guidelines set forth in Ginn and applied in similar circumstances" [citing the MATTRESS.COM, HOTELS.COM, and LAWYERS.COM cases].

Concluding that the term is, the Board declined to address Applicant's argument that the term is merely descriptive and has acquired distinctiveness.

TTABlog comment: Is the value of a domain name directly proportional to its genericness?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/16/2011   1 comments

Wednesday, June 15, 2011

CAFC Affirms TTAB's "DEALERDASHBOARD" Mere Descriptiveness Decision

In a nonprecedential disposition, the CAFC affirmed the TTAB's decision (here) sustaining an opposition to registration of the mark DEALERDASHBOARD for automobile dealer information services, on the ground of Section 2(e)(1) mere descriptiveness. Pro se Appellant Michael Dalton unsuccessfully argued that Honda lacked standing to oppose, that the Board erred in its finding of mere descriptiveness, and that the Board erred in excluding certain evidence. Dalton v. Honda Motor Co. Ltd., Appeal No. 2011-1077 (Fed. Cir. June 13, 2011) [not precedential].


Standing: The court agreed that Opposer Honda, although a Japanese corporation, had a real interest in the outcome of the case because any harm to its American subsidiary would cause harm to Honda.

Mere Descriptiveness: Dictionary definitions and third-party uses of the term "dealer dashboard" supported the Board's descriptiveness finding. Dalton pointed to third-party registrations for marks that include "dealer," but the court ruled that these registrations did not call for a different result here, since each case must be decided on its own record evidence.

Evidentiary Rulings: Rulings on evidence are reviewed for abuse of discretion. The Board properly excluded documents that were requested during discovery but were introduced for the first time during Dalton's testimony deposition. In any case, the Board specifically indicated that the excluded evidence had no bearing on the outcome.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/15/2011   0 comments

Tuesday, June 14, 2011

TTAB Affirms Refusal of FNBSECURE for Financial Services Due to Inadequate Specimens of Use

When this Applicant filed its Statement of Use, Examining Attorney W. Wendy Jun rejected the specimen (an email) and refused registration under Sections 1 and 45 of the Trademark Act, on the ground that the specimen did not show use of the applied-for mark FNBSECURE in connection with Applicant's banking and financial services. Applicant then filed substitute specimens (three emails, two account reports or statements, and a letter of correspondence) but those too were rejected, and so Applicant appealed. The Board affirmed the refusal. In re F.N.B. Corporation, Serial No. 77059129 (May 31, 2011) [not precedential].


Applicant argued that, taken together, the specimens are "part of a single and unitary experience, show[ing] both (1) the electronic delivery of the branded services and (2) the applied for mark on the services." According to Applicant, the customer sees the word FNBESECURE (TM) and is presented with a link to the recited services and information.

The Examining Attorney contended that the specimens do not identify the services, even when taken together.

The Board noted that, for services, the specimen must create a "direct association between the mark ... and the services, and there must be sufficient reference to the services to create this association." In other words, the mark must be used in a manner that would readily be perceived as identifying the source of the services. A specimen that shows only the mark, without referring to the services, is a dud.

Applicant's original email made no reference to its banking and financial services. Neither did the substitute specimens. Only the emails referenced the mark at all, but it is embedded in an email address: FNBsecure@fnb-corp.com. Customers are likely to view the FNBsecure portion as merely part of the website address rather than as a source identifier. Moreover, there is no indication of Applicant's services.

As to the argument that the specimens should be taken together, as "part of a single and unitary user experience," the Board acknowledged that it sometimes will consider separate specimens when it appears they are related or connected (e.g., screenshots of a single website or pages of a brochure), but here it found nothing to link or tie these specimens together.

In sum, the various documents "do not present applicant's proposed mark in a manner that would be perceived by potential customers as identifying applicant's banking and financial services and indicating their source."

And so the Board affirmed the refusal.

TTABlog comment: You'll have to look at the opinion to see the specimens in question. I think this case could have been awarded the WYHA? demerit badge. Do you?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/14/2011   0 comments

Monday, June 13, 2011

Test Your TTAB Judge-Ability: Are "LION GLOBAL INVESTORS" and "LION" Confusingly Similar for Financial Services?

The PTO refused registration of the mark LION GLOBAL RESOURCES for various financial services [GLOBAL INVESTORS disclaimed] in view of the registered mark LION for partly identical financial services. Applicant argued that LION is a weak formative in view of seven registrations in class 36 for marks that include LION, and the Board observed that purchasers of investment management and financial advisory services will exercise a high degree of care. So what's your decision? In re Lion Capital Management Limited, Serial No. 79051786 (May 25, 2011) [not precedential].


Of course, with the services overlapping and with no limitations as to trade channels or customers, the Board presumed that they "move in all channels of trade normal for those services" [Do services move? - ed.] and are available to all classes of purchasers for those services.

Again of course, when the services overlap, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, the Board not surprisingly found the word LION to be the dominant portion of the applied-for mark. The appearance of LION as the first word in the mark reinforced that dominance.

Applicant argued that the word LION "is diluted when used in connection with investment management and financial advisory services and, therefore, ... should be accorded only a narrow scope of protection." It submitted seven third-party registrations for "LION" marks, for services related to investment and financial services, in an effort to show that “Lion” marks can co-exist on the Principal Register in class 36.

The Board, however, pointed out that mere registrations "have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them." And although third-party registrations may, at times, be used like a dictionary to show that a term has a suggestive or descriptive meaning, the Board saw no such meaning for the word "LION."

The Board observed that purchasers of these services will exercise a high degree of care, and therefore will "focus on the trademark for the services and become aware of the source of the service because these purchases will be characterized by a personal sales experience by knowledgeable salespersons and a focused need for the services. However, even sophisticated purchasers are not immune to confusion when the marks are similar and the services in part identical.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/13/2011   2 comments

Reminder: June 21st Deadline for Comments on TTAB Involvement in Settlement Discussions

In a Notice published (here) 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 deadline for written comments is June 21, 2011.


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.

In particular, the PTO "seeks responses to the following questions, as well as comments or suggestions on related topics:

(1) Should the Board be routinely involved in settlement discussions of parties, or instead, be involved only in particular cases on an ‘‘as needed’’ basis?

(2) If you believe parties would benefit from involvement of a non-party, would it be preferable for settlement discussions to be handled by (a) an ATJ, (b) an IA, (c) a USPTO employee trained as a mediator but who is not an ATJ or IA, or (d) a third-party mediator?

(3) How would the involvement be triggered? For example, by stipulation of the parties, by unilateral request or by some other trigger? Examples of situations that might be used as triggers for required settlement discussions involving a non-party could include the use by the parties of multiple suspensions for settlement discussions which proved unsuccessful, or events such as the filing of an answer, the exchange of disclosures, the completion of some discovery, or the close of the discovery period.

(4) How many triggers should there be that would prompt Board or mediator involvement in settlement talks? For example, apart from the initial discovery conference, should there be a follow-up inquiry from the Board in the middle of discovery, at the end of discovery, or before pre-trial disclosures are made and commencement of trial is imminent? Should there be a required phone conference after the second or any subsequent request to extend or suspend discovery for settlement?

(5) To what extent should Board personnel involved in settlement discussions be recused from working on the case?

(6) Should motions for summary judgment, the vast majority of which are denied and do not result in judgment, be barred unless the parties have been involved in at least one detailed settlement conference? Should an exception to such a rule be made for motions based on jurisdictional issues or claim or issue preclusion?

(7) Should the parties be accorded only limited discovery until they have had a detailed settlement discussion with a Board judge, attorney or mediator, with the need for subsequent discovery dependent on the results of the discussion?

(8) Should the Board amend its rules to require that a motion for summary judgment be filed before a plaintiff’s pre-trial disclosures are due, and that the parties be required to engage in a settlement conference in conjunction with a discussion of plaintiff’s pre-trial disclosures?

TTABlog comment: Having been involved in the settlement of TTAB cases for decades, I can't think of a case in which Board involvement would have been helpful. I consider it my job to understand the facts and the law and to seek a settlement that best serves my client's business interests. I don't want to have to explain all that to a "settlement facilitator."

I do think there may be some benefit in the Board requiring a pre-summary judgment conference of some sort, in which the Board would try to de-rail the many futile summary judgment motions that are filed. Perhaps before allowing summary judgment papers to be submitted, the Board could require the moving party to provide a statement of undisputed facts, and the opposing party a statement of facts in dispute, based on which documents the Board could decide whether going forward with a summary judgment motion is warranted.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/13/2011   4 comments

Friday, June 10, 2011

TTAB Dismisses Oldest Pending Case, Filed in 1982

The end has arrived for the oldest pending TTAB case, United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503, filed on September 9, 1982. [last TTABlogged here]. After nearly 25 years of suspension, the case was revived last year. In March 2010, the Board issued a new testimony schedule, assigning Petitioner a testimony period closing on December 29, 2010. In January, Respondent filed a motion to dismiss under Rule 2.132(a) because Petitioner took no testimony and submitted no evidence. Petitioner did not respond, and so the Board granted the motion as conceded, in an Order dated June 6, 2011 (here).


Of course, one must ask: what is now the oldest pending TTAB proceeding?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/10/2011   1 comments

TTABlog Flotsam and Jetsam: TPAC, TTAB Dashboard, and Disclaimer Webcast

Here are a few quick notes regarding matters of interest to TTAB fans:


TPAC meeting: Erik Pelton reports here on the Jume 3rd Quarterly TPAC meeting. Maury Tepper will be stepping into the shoes of outgoing chairman John Farmer. As to the TTAB, Chief Judge Rogers noted that the TTAB website now includes a separate section on ACR, which includes some information about sample “plug and play” options (thus far, the only suggestions are from the AIPLA).

Maury M. Tepper, III

TTAB Dashboard: Not only may one find a Trademarks Dashboard at the USPTO website, but also a link on the TTAB homepage for “TTAB New Filings and Performance Measures.“

Disclaimer Webcast: The USPTO will host "A Dialogue About Trademark Disclaimer Practice" on June 21st from 1:30 to 3:30 PM in the Madison Auditorium North. It will be simultaneously webcast. Some details here.

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/10/2011   0 comments

Test Your TTAB Judge-Ability: Which One of these Four Section 2(d) Refusals Did the TTAB Reverse?

Here are four appeals from Section 2(d) refusals to register. Three were affirmed by the Board, one was reversed. Let's see if you come up with the same results based on a quick look at the marks and goods/services involved.

In re Global Animal Management, Inc., Serial No. 77551179 (May 31, 2011) [not precedential]. Refusal to register the mark GAMTAG & Design (shown above) for "radio frequency identification tags for animals" in view of the registered mark GAMMATAG for "radio frequency identification (RFID) equipment and systems, namely, RFID tags."


In re Cool Tropics, Serial No. 76691918 (June 3, 2011) [not precedential]. Refusal to register RIPS for "fruit juice, not including alcoholic beverages" in view of the identical mark registered for "liquor and liqueur beverages, namely, frozen ready-to drink [sic] alcoholic beverages of fruit."


In re Crosstex International, Inc., Serial No. 77888336 (June 1, 20110 [not precedential]. Refusal to register ULTRA for surgical face masks in view of the registered mark ULTRA SOFT & Design (below) for "face masks for medical, dental and veterinary use."


In re Starr Restaurant Organization, L.P., Serial No. 77424964 (June 3, 2011) [not precedential]. Refusal to register TNT TACOS 'N TEQUILA for bar and restaurant services [TACOS 'N TEQUILA disclaimed] in light of the registered mark T&T TACOS TEQUILA for "carry-out restaurants; restaurant and bar services" [TACOS and TEQUILA disclaimed].


For the answer, read the opinions or see the comments. Would you put one or more of these cases in the WYHA category?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/10/2011   1 comments

Thursday, June 09, 2011

CAFC Hears Oral Argument in "LE TIGRE" Appeal from TTAB Decision Sustaining 2(d) Claim

On June 8, the CAFC heard oral argument in the appeal of the TTAB's LE TIGRE decision [TTABlogged here], in which the Board found the mark LE TIGRE for "writing instruments namely fountain pens, ball point pens, felt and fiber tip pens" and "markers and small leather goods, namely, cases for diaries and daily planners; and brief case type portfolios" likely to cause confusion with LE TIGRE (Stylized) shown immediately below for various clothing items. An mp3 of the oral argument may be found here (Appeal No. 2010-1028). Craig v. Kenneth Cole, Appeal No. 2011-1028.


Based on the record evidence, and particularly the testimony of Opposer's witnesses and third-party registrations, the Board found that "it would not be uncommon for consumers to encounter the same trademark being used as a source identifier for clothing apparel as well as accessory items that would include applicant’s identified goods." For example, the COACH, LUIS VUITTON, KATE SPADE, and EMILIO PUCCI marks are so used. The Board therefore found the involved goods to be related.

Applicant argued that the doctrine of natural expansion should be applied, in which case the lack of expansion by Kenneth Cole should preclude a finding of likely confusion. Kenneth Cole argued that, with the marks identical, it need show only a viable relationship between the goods in the application and registration.

TTABlog postscript: The CAFC affirmed the TTAB's decision without opinion, in a Rule 36 per curiam order issued today (here).

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/09/2011   0 comments

TTAB Rules That Kappa Alpha Fraternity Logo Does Not Violate Red Cross Statute

The Examining Attorney refused registration of the mark shown below, as a collective membership mark and as a trademark for "fabric flags," on the ground that the mark is not in lawful use in commerce because it violates the "Red Cross Statute," 18 U.S.C. Sec. 706. That statute, in pertinent part, prohibits unauthorized use of "the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof." The Board reversed the refusal. In re Kappa Alpha Order, Serial Nos. 77463997 and 77464003 (June 3, 2011) [not precedential].


The Board observed that "[i]n an application seeking to register a mark based on use in commerce ... that use must be lawful." If the use is unlawful, including use in violation of a federal statute, registration is refused under Sections 1 and 45 of the Act.

For a refusal based on "unlawful use," it must be shown either that the issue of compliance with the statute has been determined by a court or government agency, or that there has been a per se violation of the statute.

Here, the issue was whether use of Applicant's mark constitutes a per se violation of the Red Cross statute. Because that statute is penal in nature, it must be strictly construed.

The Board found that Applicant's mark does not "use[] the emblem of the Greek red cross on a white ground," nor does in constitute "a sign or insignia made or colored in imitation thereof."

We find that the mark clearly depicts a Greek red cross. However, we find that when the mark is viewed as a whole, the distinctive shield design upon which the Greek red cross appears cannot be said to be merely a “white ground” within the meaning of the statute. Also, we find that the presence of the prominent red letters “KA” on the shield further serves to make the mark, when viewed in its entirety, more than merely “the emblem of the Greek red cross on a white ground.”

The Board therefore reversed the refusal.

TTABlog note: For a case in which unlawful use was found based on a prior court judgment, see the 2010 "HERE'S JOHNNY" precedential decision [TTABlogged here].

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/09/2011   1 comments

Wednesday, June 08, 2011

TTAB Sustains GAME BOY v. FLASHBOY Opposition: Likelihood of Confusion and Lack of Bona Fide Intent

The fame of Ninetendo's registered GAME BOY mark for video game programs and hand-held video games was a major factor in the Board's decision sustaining a Section 2(d) opposition to registration of the mark FLASHBOY for "plug and play interactive video games of virtual reality comprised of computer hardware and software" and "hand-held units for playing video games and electronic games, namely, stand alone video game machines." The Board also found for Nintendo on its claim that Applicant Golad lacked the requisite bona fide intent when he filed his application to register. Nintendo of America, Inc. v. Adar Golad, Opposition No. 91178130 (May 31, 2011) [not precedential].


Section 2(d): The Board found the mark GAME BOY to be famous for purposes of its likelihood of confusion analysis, based on staggering sales and advertising figures and significant media recognition. The Board also found the involved goods to be legally identical in part and otherwise substantially related. With the goods overlapping and the mark famous, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, the Board denied Nintendo's claim to a family of "BOY" marks due to insufficient evidence that it has promoted "a group of marks for which the common characteristic is the term 'BOY.'"

Noting the definitions of the word "flash" in the record, the Board found that "[c]onsumers are likely to see the mark FLASH BOY, and believe that it is a version of GAME BOY intended to be used on or in connection with flash memory. Alternatively, they may believe that FLASH BOY is a 'speedier' version of GAME BOY." In any case, the Board found the commercial impressions of the marks to be similar.

Applicant Golad argued that "BOY" is suggestive, relying on 19 use-based registrations in class 28. The Board, however, found the registrations to be of little probative value. For one thing, they are not evidence that the marks are actually in use or that the public is familiar with them.

The Board concluded that the dissimilarities in sight and sound between the marks are outweighed by the similar commercial impressions, "especially in light of the fame of the GAME BOY mark, and considering the overlap in goods."

Balancing the du Pont factors, the Board found confusion likely and it sustained Nintendo's Section 2(d) claim.

Lack of Bona Fide Intent: In discovery, Applicant admitted that he did not have a business plan or any other documentation reflecting plans to "advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration." That was enough to establish a prima facie case of lack of bona fide intent. Applicant failed to overcome that prima facie case.

"To show a bona fide intent to use, there must be 'objective evidence,' that is evidence in the form of 'real life facts and by the actions of the applicant.' J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 19:14 (4th ed. 2009). There should be some 'definite' (if not necessarily 'concrete') plan by applicant. For example, 'written plan of action for a new product or service,' or a 're-branding of an existing line of goods or services.' Id."

Here, Applicant pointed to his foreign trademarks and to a European patent, but failed to establish "a nexus as to how these would be used to launch FLASH BOY for the presently applied-for goods." Applicant also pointed to three prior Board decisions, but the Board noted that they are both non-precedential and factually distinguishable.

And so the Board sustained Nintendo's claim of lack of bona fide intent.

TTABlog comment: This lack-of-bona-fide-intent attack is gaining momentum. I think it's going to be the next big thing at the TTAB (now that the fraud phenomenon has subsided).

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/08/2011   1 comments

Tuesday, June 07, 2011

TTABlog Job Posting: DC Area Internet Consultancy Seeks Trademark Attorney

A Washington, D.C.-area Internet Consultancy with a focus on Domain Name Strategy is seeking an in-house Trademark Attorney for both adversarial and non-adversarial trademark matters. "This is a great position for someone 1-4 years out of law school, possibly with more experience depending on salary expectations."

The company provides domain name strategy and protection services globally to large corporations. "They envision this person growing with the firm, and contributing as a business person as well as an Attorney."

If interested, please send an MS Word version document of your resume in confidence to: Craig Rofhok, Elite Legal Search LLC, phone 858-452-0900, email craig at elite-searches.com.

posted by John L. Welch @ 6/07/2011   0 comments

"LOCKBACK" Generic for Foldable Utility Knives, Says TTAB

Although Applicant Great Neck owns a Supplemental Registration for LOCK BACK for folding utility knives, and although a federal court entered a consent judgment holding that LOCK BACK is a valid trademark, the Board affirmed a refusal to register the term LOCKBACK for "[a] foldable utility knife comprising a handle and a blade holder with the blade holder having a removable blade and being foldable within the handle," on the ground of genericness. In re Great Neck Saw Manufacturers, Inc., Serial No. 76679933 (June 2, 2011) [not precedential].


Great Neck argued that registration of its mark on the Supplemental Register is "a precedent set by the United States Patent and Trademark Office which the Examiner cannot ignore and abrogate." The Board pointed out, however, that a Supplemental Registration is not entitled to any of the presumptions of Section 7(b) of the Trademark Act: i.e., it is not prima facie evidence of anything. The Board must decide each case on its own merits, and is not bound by decisions of Examining Attorneys in other cases.

As to the consent decree, no issues were actually litigated or judicially resolved in that litigation, which was settled. "Thus, it cannot be said that a court of competent jurisdiction made a finding of fact that [Supplemental] Registration No. 2980151 is valid and enforceable." The Board observed that "a consent decree cannot dictate the decision of the PTO."

Turning to the issue of genericness, the Board found the genus of goods to be adequately defined by Applicant's original identification of goods: a folding utility knife and a folding carpet knife. The relevant public consists of "the ordinary consumer interested in purchasing a folding utility knife."

The Board found clear evidence that LOCKBACK is generic because it identifies "a type of folding utility knife." Applicant stabbed itself in the foot with its specimen packaging, which uses the term "Lockback" to describe the type of folding utility knife: "Folding Lockback Utility Knife." [The use of the R symbol adjacent the word "Lockback" was of no import.] Additionally, in its advertising, Applicant uses "Lockback" to describe the type of utility knife.


Examining Attorney Melissa Vallillo website evidence identifying "lockback knives" as a category of product, nine third-party registrations and one application using "lockback" in the identification of goods, and a U.S. patent for a "Bolster-actuated lockback knife." In view of this evidence, the Board found that the PTO had met its burden of establishing genericness.

For the sake of completeness, the Board considered whether, assuming arguendo, that LOCKBACK is not generic, Great Neck had established acquired distinctiveness. Applicant submitted evidence that it has used the term since 2003, has sold 6 million LOCKBACK knives for $25 million, and has spent more than $175,000 on advertising.

However, the Board noted that Applicant's use of LOCKBACK is not substantially exclusive, since 22 third parties use "Lockback" to describe a type of knife. Moreover its advertising expenditures are not impressive, and its sales figures are without any context, such as market share, to allow proper assessment. Notably, Applicant did not provide any direct evidence of consumer recognition of LOCKBACK as a trademark.

"To put the matter simply, a good deal more evidence than that offered here is necessary to establish that applicant's mark LOCKBACK has acquired distinctiveness."

And so the Board affirmed the refusal to register.

TTABlog query: Will Great Neck look back on LOCKBACK, and hope to get its luck back?

Text Copyright John L. Welch 2011.

posted by John L. Welch @ 6/07/2011   0 comments